Professional Documents
Culture Documents
Prosecuting IP Crimes
Prosecuting IP Crimes
Prosecuting IP Crimes
Department of Justice
Executive Office for United States Attorneys
PROSECUTING
INTELLECTUAL
PROPERTY CRIMES
Third Edition
Series
Ed Hagen
Assistant Director
OLE
James D. Donovan
Assistant Director
OLE
Appendices
A. Commonly Charged Intellectual Property Crimes
B-F. Indictments and Jury Instructions
G. Intellectual Property Contact List
H. Victim Referral and Witness Interview Forms
I. Maximum Statutory Penalties, Forfeiture, and Restitution
J. Examples of Traditional Assistance and Gifts to
Law Enforcement
Index
iii
Detailed Listing
I. Intellectual Property—An Introduction
I.A. Why Is Intellectual Property Enforcement Important? . . . . . . 1
I.B. What Is Intellectual Property? . . . . . . . . . . . . . . . . . . . . . . . . 3
I.B.1. Copyright . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
I.B.2. Trademarks and Service Marks . . . . . . . . . . . . . . . . . . 4
I.B.3. Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
I.B.4. Trade Secrets . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5
I.C. Why Criminal Enforcement? . . . . . . . . . . . . . . . . . . . . . . . . . . 5
II. Criminal Copyright Infringement—17 U.S.C. § 506 and
18 U.S.C. § 2319
II.A. Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
II.A.1. What Copyright Law Protects . . . . . . . . . . . . . . . . . . 12
II.A.2. Legal Basis for Copyright and Related Laws . . . . . . . 13
II.A.3. Relevance of Civil Cases to Criminal Prosecutions . . 14
II.A.4. Federal Preemption . . . . . . . . . . . . . . . . . . . . . . . . . . 14
II.A.5. When Copyright Protection Begins and Ends . . . . . . 15
II.A.6. The Rights Protected by Copyright . . . . . . . . . . . . . . 15
II.A.7. When Infringement is Criminal . . . . . . . . . . . . . . . . . 16
II.B. Elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
II.B.1. Existence of a Copyright . . . . . . . . . . . . . . . . . . . . . . 19
II.B.1.a. Copyrightability . . . . . . . . . . . . . . . . . . . . . . . . . 19
II.B.1.a.i. Original Work Fixed in a Tangible Medium . 19
II.B.1.a.ii. Short Phrases Are Not Copyrightable . . . . . . 20
II.B.1.a.iii. Expression of an Idea vs. Idea Itself . . . . . . . 20
II.B.1.b. Copyrights vs. Registrations vs. Certificates . . . . 20
II.B.1.c. New Procedure for “Preregistration” . . . . . . . . . . 21
II.B.1.d. Whether Registration or Preregistration is
Required to Prosecute . . . . . . . . . . . . . . . . . . . . . 22
II.B.1.d.i. Liability for Infringement Committed Prior
to Registration . . . . . . . . . . . . . . . . . . . . . . . . 24
II.B.1.d.ii. Unpublished or Pre-Release Works . . . . . . . . 25
II.B.1.d.iii. Registration of Particular Versions of a Work
................................... 26
II.B.1.e. Proof of Copyright at Trial . . . . . . . . . . . . . . . . . 27
II.B.1.f. Copyright Notice . . . . . . . . . . . . . . . . . . . . . . . . . 28
II.B.2. The Defendant Acted “Willfully” . . . . . . . . . . . . . . . 29
II.B.2.a. Legal Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
II.B.2.b. Proof at Trial . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
Table of Contents v
II.D. Special Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 71
II.E. Penalties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 72
II.E.1. Statutory Penalties . . . . . . . . . . . . . . . . . . . . . . . . . . 72
II.E.2. Sentencing Guidelines . . . . . . . . . . . . . . . . . . . . . . . . 72
II.F. Other Charges to Consider . . . . . . . . . . . . . . . . . . . . . . . . . . . 73
Table of Contents ix
V.B.1.e.
Regulatory Exemptions to Liability Under
§ 1201(a)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . 198
V.B.2. Trafficking in Access Control Circumvention Tools and
Services—17 U.S.C. §§ 1201(a)(2) and 1204 . . . . . 200
V.B.2.a. Trafficking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200
V.B.2.b. In a Technology, Product, Service, or Part Thereof
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 202
V.B.2.c. Purpose or Marketing of Circumvention Technology
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 202
V.B.2.c.1. Primarily Designed or Produced . . . . . . . . . 203
V.B.2.c.2. Limited Commercially Significant Purpose Other
Than Circumvention . . . . . . . . . . . . . . . . . . 203
V.B.2.c.3. Knowingly Marketed for Circumvention . . 204
V.B.3. Trafficking in Tools, Devices, and Services to
Circumvent Copy Controls—17 U.S.C. §§ 1201(b)(1)
and 1204 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205
V.B.3.a. Circumventing . . . . . . . . . . . . . . . . . . . . . . . . . . 205
V.B.3.b. Technological Measure That Effectively Protects a
Right of a Copyright Owner Under This Title
(“Copy Control”) . . . . . . . . . . . . . . . . . . . . . . . . 206
V.B.4. Alternate § 1201(b) Action—Trafficking in Certain
Analog Videocassette Recorders and Camcorders . . 207
V.B.5. Falsifying, Altering, or Removing Copyright
Management Information—17 U.S.C. § 1202 . . . . 208
V.C. Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 209
V.C.1. Statute of Limitations . . . . . . . . . . . . . . . . . . . . . . . 209
V.C.2. Librarian of Congress Regulations . . . . . . . . . . . . . . 209
V.C.3. Certain Nonprofit Entities . . . . . . . . . . . . . . . . . . . . 209
V.C.4. Information Security Exemption . . . . . . . . . . . . . . . 210
V.C.5. Reverse Engineering and Interoperability of Computer
Programs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 210
V.C.6. Encryption Research . . . . . . . . . . . . . . . . . . . . . . . . 213
V.C.7. Restricting Minors' Access to the Internet . . . . . . . . 214
V.C.8. Protection of Personally Identifying Information . . 215
V.C.9. Security Testing . . . . . . . . . . . . . . . . . . . . . . . . . . . . 215
V.C.10. Constitutionality of the DMCA . . . . . . . . . . . . . . 216
V.C.10.a. Congress's Constitutional Authority to Enact § 1201
of the DMCA . . . . . . . . . . . . . . . . . . . . . . . . . . 216
V.C.10.b. The First Amendment . . . . . . . . . . . . . . . . . . . . 218
V.C.10.b.i. Facial Challenges . . . . . . . . . . . . . . . . . . . 219
V.C.10.b.ii. “As Applied” First Amendment Challenges to
the DMCA . . . . . . . . . . . . . . . . . . . . . . . . 220
V.C.10.c. Vagueness . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 221
Table of Contents xi
VII.D. No Prosecution for Interstate Transportation or Receipt of
Stolen Property—18 U.S.C. §§ 2314, 2315 . . . . . . . . . . . . 248
VIII. Penalties, Restitution, and Forfeiture
VIII.A. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252
VIII.B. Statutory Penalties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252
VIII.C. Sentencing Guidelines . . . . . . . . . . . . . . . . . . . . . . . . . . . . 252
VIII.C.1. Offenses Involving Copyright (Including Bootleg
Music, Camcorded Movies, and the Unauthorized
Use of Satellite, Radio, and Cable Communications),
Trademark, Counterfeit Labeling, and the DMCA
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 253
VIII.C.1.a. Applicable Guideline is § 2B5.3 . . . . . . . . . 253
VIII.C.1.b. Base Offense Level . . . . . . . . . . . . . . . . . . . 255
VIII.C.1.c. Adjust the Offense Level According to the
“Infringement Amount”—U.S.S.G. §
2B5.3(b)(1) . . . . . . . . . . . . . . . . . . . . . . . . . 255
VIII.C.1.c.i. Formula . . . . . . . . . . . . . . . . . . . . . . . . . 255
VIII.C.1.c.ii. Number of Infringing Items . . . . . . . . . 256
VIII.C.1.c.iii. Retail Value . . . . . . . . . . . . . . . . . . . . . 257
VIII.C.1.c.iv. Determining Amounts and
Values—Reasonable Estimates Allowed 261
VIII.C.1.c.v. Cross-Reference to Loss Table in
U.S.S.G. § 2B1.1 . . . . . . . . . . . . . . . . . . 263
VIII.C.1.d. Pre-Release Piracy Increases the Offense Level by
2—U.S.S.G. § 2B5.3(b)(2) . . . . . . . . . . . . . 263
VIII.C.1.e. Manufacturing, Importing, or Uploading
Infringing Items Increases the Offense Level by
2—U.S.S.G. § 2B5.3(b)(3) [before October 24,
2005: § 2B5.3(b)(2)] . . . . . . . . . . . . . . . . . . 264
VIII.C.1.f. Offense Not Committed for Commercial
Advantage or Private Financial Gain Reduces the
Offense Level by 2—U.S.S.G. § 2B5.3(b)(4)
[before October 24, 2005: § 2B5.3(b)(3)] . 266
VIII.C.1.g. Offense Involving Risk of Serious Bodily Injury
or Possession of a Dangerous Weapon Increases
the Offense Level by 2—U.S.S.G. § 2B5.3(b)(5)
[before October 24, 2005: § 2B5.3(b)(4)] . 266
VIII.C.1.h. Decryption or Circumvention of Access Controls
Increases the Offense Level—U.S.S.G. § 3B1.3267
VIII.C.1.i. Upward Adjustment for Harm to Copyright or
Mark-Owner's Reputation, Connection with
Organized Crime, or Other Unspecified Grounds 267
Table of Contents xv
Preface and Acknowledgments
xvii
Department of Justice directive. See United States v. Caceres, 440 U.S.
741 (1979).
If you have questions about anything in this book, we invite you to
call the Computer Crime and Intellectual Property Section at (202)
514-1026. Attorneys are on duty every day for the specific purpose of
answering such calls and providing support to U.S. Attorney's Offices
nationwide.
Michael M. DuBose,
Deputy Chief
Computer Crime & Intellectual Property Section
Criminal Division
Department of Justice
1
industry, and the efficiency of industry depends in no small part on the
protection of intellectual property.” Rockwell Graphic Sys., Inc. v. DEV
Indus., Inc., 925 F.2d 174, 180 (7th Cir. 1991). Therefore, effective
protection of intellectual property rights is essential to fostering creativity
and to supporting our economic and financial infrastructure.
This is a pivotal time for intellectual property enforcement. Market
and technological developments have converged to create an environment
in which the distribution of both legitimate and illegitimate goods
flourishes as never before. As economic freedom expands to more and
more countries, their manufacturers and consumers are increasingly
interconnected due to advances in telecommunication networks,
integrated financial markets, and global advertising.
This interconnected global economy creates unprecedented business
opportunities to market and sell intellectual property worldwide.
Geographical borders present no impediment to international distribution
channels. Consumers enjoy near-immediate access to almost any product
manufactured in the United States or abroad, and they are accustomed
to using the international credit card system and online money brokers
(such as PayPal) to make payment a virtually seamless process worldwide.
If the product can not be immediately downloaded to a home PC, it can
be shipped to arrive by next day air.
However, the same technology that benefits rights-holders and
consumers also benefits IP thieves seeking to make a fast, low-risk buck.
Total global losses to United States companies from copyright piracy
alone in 2005 were estimated to be $30-$35 billion, not counting
significant losses due to Internet piracy, for which meaningful estimates
were not yet available. See International Intellectual Property Alliance
Submission to the U.S. Trade Representative for the 2006 Special 301
Report on Global Copyright Protection and Enforcement, at 21 (Feb. 13,
2006), available at http://www.iipa.com/pdf/2006SPEC301COVER
LETTERwLTRHD.pdf.
Trafficking in counterfeit merchandise presents economic
consequences no less severe. It has been estimated that between 5% and
7% of world trade is in counterfeit goods, which is equivalent to
approximately $512 billion in global lost sales. U.S. Chamber of
Commerce, What Are Piracy and Counterfeiting Costing the American
Economy? 2 (2005), available at http://www.uschamber.com/ncf/
initiatives/counterfeiting.htm (following links re “Scope of the Problem”).
Counterfeit products are not limited to bootleg DVDs or fake “designer”
purses; they include prescription drugs, automobile and airline parts, food
products, and insecticides. See Stop Counterfeiting in Manufactured
I.B.1. Copyright
The law of copyright is designed to foster the production of creative
works and the free flow of ideas by providing legal protection for creative
expression. Copyright provides protection against the infringement of
certain exclusive rights in “original works of authorship fixed in any
tangible medium of expression,” including computer software; literary,
musical, and dramatic works; motion pictures and sound recordings; and
pictorial, sculptural, and architectural works. See 17 U.S.C. § 102(a).
These exclusive rights include the rights of reproduction, public
distribution, public performance, public display, and preparation of
derivative works. 17 U.S.C. § 106. Legal protection exists as soon as the
work is expressed in tangible form. Copyright law protects the physical
expression of an idea, but not the idea itself.
Although civil law protects all the copyright owner's exclusive rights,
criminal law primarily focuses on the rights of distribution and
reproduction. See 17 U.S.C. § 506(a) and 18 U.S.C. § 2319. Those
convicted of criminal copyright infringement face up to five years'
imprisonment and a $250,000 fine. Id.
I. Introduction 3
I.B.2. Trademarks and Service Marks
The federal law of trademarks and service marks protects a
commercial identity or brand used to identify a product or service to
consumers. The Lanham Act, 15 U.S.C. §§ 1051-1127, prohibits the
unauthorized use of a trademark, which is defined as “any word, name,
symbol, or device” used by a person “to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by
others and to indicate the source of the goods.” 15 U.S.C. § 1127. By
registering trademarks and service marks with the U.S. Patent and
Trademark Office, the owner is granted the exclusive right to use the
marks in commerce in the United States, and can exclude others from
using the mark, or a comparable mark, in a way likely to cause confusion
in the marketplace. A protected mark might be the name of the product
itself, such as “Pfizer” or “L.L. Bean”; a distinguishing symbol, such as the
Nike “swoosh” or the MGM lion; or a distinctive shape and color, such
as the blue diamond shape of a Viagra tablet. Certain symbols like the
Olympic rings also receive like protection.
Legal protections for trademarks and service marks not only help
protect the goodwill and reputation of mark-owners, but also promote fair
competition and the integrity of markets, and protect consumers by
helping to ensure they receive accurate information about the origins of
products and services.
Federal criminal law has long prohibited trafficking in goods or
services that bear a counterfeit mark. 18 U.S.C. § 2320. As discussed
more fully in subsequent chapters, in March 2006 the criminal trademark
statute was amended to also prohibit trafficking in labels or packaging
bearing a counterfeit mark, even when the label or packaging is
unattached to the underlying good. Individuals convicted of § 2320
offenses face up to 10 years' imprisonment and a $2,000,000 fine.
I.B.3. Patents
Patents protect the world of inventions. In its simplest form, a patent
is a property right for an invention granted by the government to the
inventor. A patent gives the owner the right to exclude others from
making, using, and selling devices that embody the claimed invention. See
35 U.S.C. § 271(a). Patents generally protect products and processes, not
pure ideas. Thus, Albert Einstein could not have received a patent for his
theory of relativity, but methods for using this theory in a nuclear power
plant are patentable. Inventors must file for patent protection with the
U.S. Patent and Trademark Office.
I. Introduction 5
organized crime groups, and those whose criminal conduct threatens
public health and safety. Indeed, because many violations of intellectual
property rights involve no loss of tangible property and, for infringement
crimes, do not even require direct contact with the rights-holder, the
intellectual property owner often does not know that it is a victim until
an infringer's activities are investigated and prosecuted.
The Department pursues a three-front approach to ensure aggressive
and effective prosecution. First, the Criminal Division's Computer Crime
and Intellectual Property Section (“CCIPS”), based in Washington, D.C.,
provides a core team of expert intellectual property prosecutors who
investigate, prosecute, and coordinate national and international cases of
intellectual property theft. This group of specialists helps develop and
execute the Department's overall intellectual property enforcement
strategy, and provides training and 24/7 support to Assistant U.S.
Attorneys nationally. This Manual, for instance, is one of the training
tools that CCIPS provides.
Second, because primary responsibility for prosecution of federal
crimes generally—and intellectual property offenses specifically—falls to
the 94 U.S. Attorneys' Offices across the United States and its territories,
the Justice Department has designated at least one, and oftentimes more,
Computer Hacking and Intellectual Property (“CHIP”) Coordinator in
every U.S. Attorney's Office in the country. CHIP Coordinators are
Assistant U.S. Attorneys with specialized training in prosecuting
intellectual property and computer crime who serve as subject-matter
experts within their districts. As of this writing, there are approximately
230 CHIP prosecutors designated to handle both computer crime and
intellectual property matters nationwide.
Third, CHIP Units augment the extensive network of CHIP
prosecutors. Each CHIP Unit consists of a concentrated number of
trained Assistant U.S. Attorneys in the same office. CHIP Units are
strategically located in districts that experience a higher incidence of
intellectual property and cyber-crime, or where such crimes have the
highest economic impact. These specialized squads focus on prosecuting
intellectual property offenses such as trademark violations, copyright
infringement, and thefts of trade secrets. In addition, they prosecute high-
technology offenses including computer hacking, virus and worm
proliferation, Internet fraud, and other attacks on computer systems.
CHIP Unit attorneys are also actively involved in regional training of
other prosecutors and federal agents regarding high-tech investigations,
and they work closely with victims of intellectual property theft and
cyber-crime on prevention efforts. There are currently 25 CHIP Units
I. Introduction 7
I.
Intellectual Property—
An Introduction
1
industry, and the efficiency of industry depends in no small part on the
protection of intellectual property.” Rockwell Graphic Sys., Inc. v. DEV
Indus., Inc., 925 F.2d 174, 180 (7th Cir. 1991). Therefore, effective
protection of intellectual property rights is essential to fostering creativity
and to supporting our economic and financial infrastructure.
This is a pivotal time for intellectual property enforcement. Market
and technological developments have converged to create an environment
in which the distribution of both legitimate and illegitimate goods
flourishes as never before. As economic freedom expands to more and
more countries, their manufacturers and consumers are increasingly
interconnected due to advances in telecommunication networks,
integrated financial markets, and global advertising.
This interconnected global economy creates unprecedented business
opportunities to market and sell intellectual property worldwide.
Geographical borders present no impediment to international distribution
channels. Consumers enjoy near-immediate access to almost any product
manufactured in the United States or abroad, and they are accustomed
to using the international credit card system and online money brokers
(such as PayPal) to make payment a virtually seamless process worldwide.
If the product can not be immediately downloaded to a home PC, it can
be shipped to arrive by next day air.
However, the same technology that benefits rights-holders and
consumers also benefits IP thieves seeking to make a fast, low-risk buck.
Total global losses to United States companies from copyright piracy
alone in 2005 were estimated to be $30-$35 billion, not counting
significant losses due to Internet piracy, for which meaningful estimates
were not yet available. See International Intellectual Property Alliance
Submission to the U.S. Trade Representative for the 2006 Special 301
Report on Global Copyright Protection and Enforcement, at 21 (Feb. 13,
2006), available at http://www.iipa.com/pdf/2006SPEC301COVER
LETTERwLTRHD.pdf.
Trafficking in counterfeit merchandise presents economic
consequences no less severe. It has been estimated that between 5% and
7% of world trade is in counterfeit goods, which is equivalent to
approximately $512 billion in global lost sales. U.S. Chamber of
Commerce, What Are Piracy and Counterfeiting Costing the American
Economy? 2 (2005), available at http://www.uschamber.com/ncf/
initiatives/counterfeiting.htm (following links re “Scope of the Problem”).
Counterfeit products are not limited to bootleg DVDs or fake “designer”
purses; they include prescription drugs, automobile and airline parts, food
products, and insecticides. See Stop Counterfeiting in Manufactured
I.B.1. Copyright
The law of copyright is designed to foster the production of creative
works and the free flow of ideas by providing legal protection for creative
expression. Copyright provides protection against the infringement of
certain exclusive rights in “original works of authorship fixed in any
tangible medium of expression,” including computer software; literary,
musical, and dramatic works; motion pictures and sound recordings; and
pictorial, sculptural, and architectural works. See 17 U.S.C. § 102(a).
These exclusive rights include the rights of reproduction, public
distribution, public performance, public display, and preparation of
derivative works. 17 U.S.C. § 106. Legal protection exists as soon as the
work is expressed in tangible form. Copyright law protects the physical
expression of an idea, but not the idea itself.
Although civil law protects all the copyright owner's exclusive rights,
criminal law primarily focuses on the rights of distribution and
reproduction. See 17 U.S.C. § 506(a) and 18 U.S.C. § 2319. Those
convicted of criminal copyright infringement face up to five years'
imprisonment and a $250,000 fine. Id.
I. Introduction 3
I.B.2. Trademarks and Service Marks
The federal law of trademarks and service marks protects a
commercial identity or brand used to identify a product or service to
consumers. The Lanham Act, 15 U.S.C. §§ 1051-1127, prohibits the
unauthorized use of a trademark, which is defined as “any word, name,
symbol, or device” used by a person “to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by
others and to indicate the source of the goods.” 15 U.S.C. § 1127. By
registering trademarks and service marks with the U.S. Patent and
Trademark Office, the owner is granted the exclusive right to use the
marks in commerce in the United States, and can exclude others from
using the mark, or a comparable mark, in a way likely to cause confusion
in the marketplace. A protected mark might be the name of the product
itself, such as “Pfizer” or “L.L. Bean”; a distinguishing symbol, such as the
Nike “swoosh” or the MGM lion; or a distinctive shape and color, such
as the blue diamond shape of a Viagra tablet. Certain symbols like the
Olympic rings also receive like protection.
Legal protections for trademarks and service marks not only help
protect the goodwill and reputation of mark-owners, but also promote fair
competition and the integrity of markets, and protect consumers by
helping to ensure they receive accurate information about the origins of
products and services.
Federal criminal law has long prohibited trafficking in goods or
services that bear a counterfeit mark. 18 U.S.C. § 2320. As discussed
more fully in subsequent chapters, in March 2006 the criminal trademark
statute was amended to also prohibit trafficking in labels or packaging
bearing a counterfeit mark, even when the label or packaging is
unattached to the underlying good. Individuals convicted of § 2320
offenses face up to 10 years' imprisonment and a $2,000,000 fine.
I.B.3. Patents
Patents protect the world of inventions. In its simplest form, a patent
is a property right for an invention granted by the government to the
inventor. A patent gives the owner the right to exclude others from
making, using, and selling devices that embody the claimed invention. See
35 U.S.C. § 271(a). Patents generally protect products and processes, not
pure ideas. Thus, Albert Einstein could not have received a patent for his
theory of relativity, but methods for using this theory in a nuclear power
plant are patentable. Inventors must file for patent protection with the
U.S. Patent and Trademark Office.
I. Introduction 5
organized crime groups, and those whose criminal conduct threatens
public health and safety. Indeed, because many violations of intellectual
property rights involve no loss of tangible property and, for infringement
crimes, do not even require direct contact with the rights-holder, the
intellectual property owner often does not know that it is a victim until
an infringer's activities are investigated and prosecuted.
The Department pursues a three-front approach to ensure aggressive
and effective prosecution. First, the Criminal Division's Computer Crime
and Intellectual Property Section (“CCIPS”), based in Washington, D.C.,
provides a core team of expert intellectual property prosecutors who
investigate, prosecute, and coordinate national and international cases of
intellectual property theft. This group of specialists helps develop and
execute the Department's overall intellectual property enforcement
strategy, and provides training and 24/7 support to Assistant U.S.
Attorneys nationally. This Manual, for instance, is one of the training
tools that CCIPS provides.
Second, because primary responsibility for prosecution of federal
crimes generally—and intellectual property offenses specifically—falls to
the 94 U.S. Attorneys' Offices across the United States and its territories,
the Justice Department has designated at least one, and oftentimes more,
Computer Hacking and Intellectual Property (“CHIP”) Coordinator in
every U.S. Attorney's Office in the country. CHIP Coordinators are
Assistant U.S. Attorneys with specialized training in prosecuting
intellectual property and computer crime who serve as subject-matter
experts within their districts. As of this writing, there are approximately
230 CHIP prosecutors designated to handle both computer crime and
intellectual property matters nationwide.
Third, CHIP Units augment the extensive network of CHIP
prosecutors. Each CHIP Unit consists of a concentrated number of
trained Assistant U.S. Attorneys in the same office. CHIP Units are
strategically located in districts that experience a higher incidence of
intellectual property and cyber-crime, or where such crimes have the
highest economic impact. These specialized squads focus on prosecuting
intellectual property offenses such as trademark violations, copyright
infringement, and thefts of trade secrets. In addition, they prosecute high-
technology offenses including computer hacking, virus and worm
proliferation, Internet fraud, and other attacks on computer systems.
CHIP Unit attorneys are also actively involved in regional training of
other prosecutors and federal agents regarding high-tech investigations,
and they work closely with victims of intellectual property theft and
cyber-crime on prevention efforts. There are currently 25 CHIP Units
I. Introduction 7
II.
Criminal Copyright
Infringement—
17 U.S.C. § 506 and
18 U.S.C. § 2319
II.A. Overview . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
II.A.1. What Copyright Law Protects . . . . . . . . . . . . . . . . . . . 12
II.A.2. Legal Basis for Copyright and Related Laws . . . . . . . . . 13
II.A.3. Relevance of Civil Cases to Criminal Prosecutions . . . . 14
II.A.4. Federal Preemption . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
II.A.5. When Copyright Protection Begins and Ends . . . . . . . 15
II.A.6. The Rights Protected by Copyright . . . . . . . . . . . . . . . 15
II.A.7. When Infringement is Criminal . . . . . . . . . . . . . . . . . . 16
II.B. Elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
II.B.1. Existence of a Copyright . . . . . . . . . . . . . . . . . . . . . . . 19
II.B.1.a. Copyrightability . . . . . . . . . . . . . . . . . . . . . . . . . . 19
II.B.1.a.i. Original Work Fixed in a Tangible Medium . 19
II.B.1.a.ii. Short Phrases Are Not Copyrightable . . . . . 20
II.B.1.a.iii. Expression of an Idea vs. Idea Itself . . . . . . 20
II.B.1.b. Copyrights vs. Registrations vs. Certificates . . . . . 20
II.B.1.c. New Procedure for “Preregistration” . . . . . . . . . . . 21
II.B.1.d. Whether Registration or Preregistration is Required to
Prosecute . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
II.B.1.d.i. Liability for Infringement Committed Prior
to Registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
II.B.1.d.ii. Unpublished or Pre-Release Works . . . . . . . 25
9
II.B.1.d.iii. Registration of Particular Versions of a Work
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
II.B.1.e. Proof of Copyright at Trial . . . . . . . . . . . . . . . . . . 27
II.B.1.f. Copyright Notice . . . . . . . . . . . . . . . . . . . . . . . . . 29
II.B.2. The Defendant Acted “Willfully” . . . . . . . . . . . . . . . . . 29
II.B.2.a. Legal Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . 29
II.B.2.b. Proof at Trial . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
II.B.3. Infringement of the Copyright . . . . . . . . . . . . . . . . . . . 34
II.B.3.a. Infringement by Reproduction or Distribution . . . 36
II.B.3.a.i. Reproduction . . . . . . . . . . . . . . . . . . . . . . . . 38
II.B.3.a.ii. Distribution . . . . . . . . . . . . . . . . . . . . . . . . . 40
II.B.3.b. Infringement of at Least 10 Copies of 1 or More
Copyrighted Works With a Total Retail Value Exceeding
$2,500 Within a 180-Day Period . . . . . . . . . . . . . . . . 46
II.B.3.b.i. Generally . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
II.B.3.b.ii. Definition of “Retail Value” in this Context 46
II.B.3.c. Distribution of a Work Being Prepared for Commercial
Distribution, by Making It Available on a Publicly-Accessible
Computer Network, if the Defendant Knew or Should Have
Known the Work Was Intended for Commercial Distribution
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49
II.B.3.c.i. Distribution . . . . . . . . . . . . . . . . . . . . . . . . . 50
II.B.3.c.ii. Making the Work Available on a Computer
Network Accessible to Members of the Public . . . . 50
II.B.3.c.iii. Work Being Prepared for Commercial
Distribution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51
II.B.3.c.iv. The Defendant Knew or Should Have Known that
the Work Was Intended for Commercial Distribution 52
II.B.4. Additional Element for Enhanced Sentence: Purpose of
Commercial Advantage or Private Financial Gain . . . . . . . 53
II.B.4.a. History . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 53
II.B.4.b. Legal Standard . . . . . . . . . . . . . . . . . . . . . . . . . . . 54
II.A. Overview
II.A.1. What Copyright Law Protects
Copyright law has two goals: to protect the rights of authors, and,
thereby, to foster development of more creative works for the benefit of
the public. The Constitution, in granting Congress the power to enact
intellectual property laws, describes both these goals and the means to
achieve it: “To promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the exclusive Right
to their respective Writings and Discoveries.” U.S. Const., art. I, § 8, cl.
8. Maintaining an appropriate balance between protecting works and
incentives for creators of works, on the one hand, and disseminating
knowledge and information to the public, on the other, is a constant
theme throughout the history of copyright law. See Twentieth Century
Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
The creator of an original work of expression, fixed in a tangible
medium, is granted for a limited time a copyright, which is the exclusive
right to copy, distribute, and make certain other uses of the work.
Copyright law protects all “original works of authorship fixed in any
tangible medium of expression, now known or later developed, from
which they can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device.” 17 U.S.C. § 102(a)
(emphasis added). “Originality” in copyright law is a low threshold: the
work need only have been independently created by the author, as
II.B.1.a. Copyrightability
Copyright law protects all “original works of authorship fixed in any
tangible medium of expression....” 17 U.S.C. § 102(a) (emphasis added).
II.B.3.a.i. Reproduction
Reproduction encompasses a wide array of conduct, ranging from a
novelist's plagiarizing substantial portions of someone else's book or a
musician's sampling several notes from a previously-recorded song, to
using a computer to rip an audio track into MP3 format or making a bit-
for-bit copy of a movie on DVD. In most criminal cases, infringing
reproduction involves the production of exact, or nearly-exact, duplicates
through digital means, as with computer programs and movies on DVD.
Copying need not be so blatant or literal to qualify as infringement, but
criminal cases rarely involve defendants who have copied only a small
portion of a copyrighted work. Disputes over whether one song sounds
too alike another, or whether a movie screenplay copies dialogue or
characters from an earlier screenplay, are generally best left to civil
lawsuits. Nevertheless, some cases of less-than-wholesale, verbatim
copying of an entire work may deserve criminal prosecution.
• Proof of Infringement by Reproduction
The best evidence of infringement by reproduction is direct evidence
that the defendant copied the victim's work, including (for example)
eyewitness testimony, or even computer logs indicating the copying of
particular discs or files. Typically, criminal copyright cases will involve
complete, verbatim copying of many copyrighted works, and defendants
are generally unlikely to challenge this issue credibly. In fact, defendants
often even advertise or otherwise mark the infringing copies as being
copies. However, when the copies alleged to be infringing are not
essentially identical to the original work, prosecutors may need to prove
infringement in greater depth.
II.B.3.a.ii. Distribution
Section 106(3) of Title 17 grants copyright owners the exclusive right
“to distribute copies or phonorecords of the copyrighted work to the
public by sale or other transfer of ownership, or by rental, lease, or
lending.” 17 U.S.C. § 106(3). The distribution right is implicated by a
wide variety of conduct, including the sale of books at a bookstore, used
CDs at a garage sale, and pirated DVDs at a flea market; the lending of
books by a library; and transferring pirated software to users from “warez”
websites on the Internet. Distribution is not limited to sales, but also
includes other transfers of ownership such as gifts or barter. Ford Motor
Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 299 (3d Cir. 1991)
(citing H.R. Rep. No. 94-1476, reprinted in 1976 U.S.C.C.A.N. 5659,
5675-76 and 17 U.S.C.A. § 106 (West 1997) (historical note)).
II.B.3.c.i. Distribution
The offense defined under 17 U.S.C. § 506(a)(1)(C) applies only to
infringement by distribution (as opposed to the copyright felonies in 17
U.S.C. § 506(a)(1)(A),(B) that apply to infringement by distribution or
reproduction). For discussion of proving distribution, see Section
II.B.3.a.ii. of this Chapter.
Section § 506(a)(1)(C)'s use of the term “making available” does not
resolve the issue of whether “distribution” requires an actual
dissemination of infringing copies. As of this writing, the only reported
case that has discussed this issue, a civil copyright case, stated that
“distribution” and “making available on a publicly-accessible computer
network” are two separate elements of the § 506(a)(1)(C) offense. See In
re Napster, Inc. Copyright Litig., 377 F. Supp. 2d 796, 805 (N.D. Cal.
2005). The inclusion of “making available” did not, according to this
court, redefine distribution to include making available. See Section
II.B.E.A.ii and the following Section of this Chapter.
II.B.4.a. History
Before 1997, the government had to prove the defendant's intent to
seek commercial advantage or private financial gain in every criminal
copyright prosecution. In United States v. LaMacchia, 871 F. Supp. 535,
539-40 (D. Mass. 1994), the court noted that the government could not
have charged the defendant with criminal copyright infringement because
he had operated his Internet site for trading pirated works without a
profit motive.
But Congress found this unacceptable. When LaMacchia was decided,
times had already changed. Now, as then, the Internet allows people to
engage in large-scale electronic piracy with little expense, time or
complexity. The ease of Internet piracy reduces (and perhaps eliminates)
infringers' need for a financial return even as it significantly affects the
market for legitimate goods. See Committee Report on No Electronic
Theft Act, H.R. Rep. No. 105-339, at 4 (1997). Willful infringers can act
II.C. Defenses
II.C.1. Statute of Limitations: 5 years
The criminal copyright statute has a five-year statute of limitations.
17 U.S.C. § 507(a). The five-year limitations period was first established
by the NET Act, Pub. L. No. 105-147 § 2(c), 111 Stat. 2678 (1997),
before which the limitations period had been three years, the same as for
civil copyright claims. See Copyright Act of 1976, Pub. L. No. 94-553, 90
Stat. 2541 (1976).
II.C.2. Jurisdiction
U.S. copyright law generally has no extraterritorial effect. Although
many foreign countries protect United States copyrights against
infringement in foreign lands, and domestic law similarly protects foreign
copyrighted works against infringement within the United States, 17
U.S.C. § 411(a), U.S. law generally “cannot be invoked to secure relief for
acts of [copyright] infringement occurring outside the United States.”
Palmer v. Braun , 376 F.3d 1254, 1258 (11th Cir. 2004); see also
Subafilms, Ltd. v. MGM-Pathe Communc'ns, 24 F.3d 1088, 1091 (9th
Cir. 1994) (en banc); Update Art, Inc. v. Modiin Pub'g, Ltd., 843 F.2d 67,
73 (2d Cir. 1988) (“It is well established that copyright laws generally do
not have extraterritorial application.”).
This means that some copyright cases cannot be brought in the
United States, even when the victims are U.S. companies or nationals and
the infringed works are copyrighted in the United States. For example,
U.S. law does not grant U.S. courts jurisdiction over a manufacturing
plant in southeast Asia that produces pirated DVDs for sale in Europe, if
the infringing conduct occurs solely abroad. See Palmer, 376 F.3d at
1258.
II.C.3. Venue
Crimes “begun in one district and completed in another, or
committed in more than one district, may be inquired of and prosecuted
in any district in which such offense was begun, continued, or completed.”
II.E. Penalties
II.E.1. Statutory Penalties
Whereas the substantive crime of copyright infringement is set forth
at 17 U.S.C. § 506(a), the penalties for that conduct are set forth at 18
U.S.C. § 2319. See 17 U.S.C. § 506(a) (“Any person who infringes a
copyright willfully ... shall be punished as provided under section 2319 of
title 18, United States Code.”).
A misdemeanor carries a sentence of up to one year of imprisonment
and a $100,000 fine or twice the monetary gain or loss. See 18
U.S.C. §§ 2319(b)(3),(c)(3), 3571(b)(5). For the crimes that qualify as
misdemeanors, see Section II.B.5. of this Chapter.
A first-time felony conviction under 17 U.S.C. § 506(a)(1)(A)
(numbered § 506(a)(1) before the April 27, 2005 amendments) carries a
five-year maximum sentence of imprisonment and a fine up to $250,000
or twice the monetary gain or loss; repeat offenders face the same fine and
ten years of imprisonment. 18 U.S.C. §§ 2319(b)(1),(2), 3571(b)(3),(d)
(specifying fines for Title 18 offenses where the fine is otherwise
unspecified).
A first-time felony conviction under 17 U.S.C. § 506(a)(1)(B)
(numbered § 506(a)(2) before the April 27, 2005 amendments) carries a
three-year maximum sentence of imprisonment and a fine up to $250,000
or twice the monetary gain or loss; repeat offenders face the same fine and
six years' imprisonment. 18 U.S.C. §§ 2319(c)(1),(2), 3571(b)(3),(d).
A first-time felony conviction under 17 U.S.C. § 506(a)(1)(C) (newly
enacted on April 27, 2005) carries a three-year maximum sentence—five
years if the offense was committed for purposes of commercial advantage
or private financial gain—and a fine of $250,000 or twice the monetary
gain or loss; repeat offenders face the same fine and twice the jail time (six
III.A. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 83
III.A.1. Overview of the Chapter . . . . . . . . . . . . . . . . . . . . . . . 83
III.A.2. Why Criminal Law Protects Trademarks, Service Marks, and
Certification Marks . . . . . . . . . . . . . . . . . . . . . . . . . . . 85
III.B. Elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87
III.B.1. The Trademark Counterfeiting Crime in General . . . . 87
III.B.2. Relevance of Civil Trademark Law in Criminal
Cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89
III.B.3. Intentionally Trafficked or Attempted to Traffic in Goods or
Services [after March 16, 2006: or Labels, Documentation,
or Packaging for Goods or Services]
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90
III.B.3.a. Intentionally . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90
III.B.3.b. Trafficked or Attempted to Traffic . . . . . . . . . . . 90
III.B.3.b.i. General Definition . . . . . . . . . . . . . . . . . . . 90
III.B.3.b.ii. Consideration vs. Commercial Advantage and
Private Financial Gain . . . . . . . . . . . . . . . . . . . . . . 92
III.B.3.b.iii. Making and Obtaining Counterfeits vs.
Possession with Intent to Traffic . . . . . . . . . . . . . . 93
III.B.3.b.iv. Importing and Exporting Related to Transporting
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94
III.B.3.c. Goods and Services [after March 16, 2006: and Labels,
Patches, Stickers, Wrappers, Badges, Emblems, Medallions,
81
Charms, Boxes, Containers, Cans, Cases, Hangtags,
Documentation, or Packaging of Any Type or Nature] 94
III.B.4. The Defendant Used a "Counterfeit Mark" On or In
Connection With Those Goods or Services [after March 16,
2006: or a Counterfeit Mark Was Applied to Labels,
Documentation, or Packaging for Those Goods or Services]
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96
III.B.4.a. Definition of Counterfeit Mark Generally: Not Genuine
or Authentic . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96
III.B.4.b. The Counterfeit Mark Must Be Identical to or
Indistinguishable from a Genuine Mark Owned by Another
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98
III.B.4.c. The Genuine Mark Must Be Federally Registered on the
U.S. Patent and Trademark Office's Principal Register
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101
III.B.4.d. The Genuine Mark Must Have Been in Use by the
Mark-Holder or Its Licensee . . . . . . . . . . . . . . . . . . . . 103
III.B.4.e. Use of the Counterfeit Mark "On or In Connection
With" Goods or Services . . . . . . . . . . . . . . . . . . . . . . 104
III.B.4.f. The Counterfeit Mark Must Have Been Used for the
Same Type of Goods or Services for Which the Genuine
Mark Was Registered . . . . . . . . . . . . . . . . . . . . . . . . . 105
III.B.4.g. Likelihood of Confusion, Mistake, or Deception
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 107
III.B.5. The Defendant Used the Counterfeit Mark "Knowingly"
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 110
III.B.6. Venue . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114
III.C. Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 114
III.C.1. Authorized-Use Defense: Overrun Goods . . . . . . . . . 114
III.C.2. Authorized-Use Defense—Gray Market Goods . . . . . 117
III.C.3. Repackaging Genuine Goods . . . . . . . . . . . . . . . . . . . 118
III.C.4. Lanham Act Defenses . . . . . . . . . . . . . . . . . . . . . . . . 121
III.C.5. Statute of Limitations . . . . . . . . . . . . . . . . . . . . . . . . 122
III.D. Special Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 123
III.A. Introduction
III.A.1. Overview
Trademarks and service marks are part of the fabric of American
society. They are on our clothes, our cars, and nearly everything else we
buy, and are advertised on the street, in magazines, on television and
websites, and especially in stores. They are protected not only by civil law,
but also by the criminal counterfeit marks statute, 18 U.S.C. § 2320.
A trademark is “any word, name, symbol, or device, or any
combination thereof ... used by a person ... to identify and distinguish his
or her goods ... from those manufactured or sold by others and to indicate
the source of the goods.” 15 U.S.C. § 1127. A service mark, by contrast,
identifies the source of services rendered or offered, such as athletic
events, television shows, restaurant services, telecommunications services,
or retail business services, rather than goods. Id. Examples of well-known
III.B. Elements
III.B.1. The Trademark Counterfeiting Crime in General
The Trademark Counterfeiting Act, 18 U.S.C. § 2320(a), states:
Whoever intentionally traffics or attempts to traffic in goods or
services and knowingly uses a counterfeit mark on or in connection
with such goods or services[, or intentionally traffics or attempts to
traffic in labels, patches, stickers, wrappers, badges, emblems,
medallions, charms, boxes, containers, cans, cases, hangtags,
documentation, or packaging of any type or nature, knowing that a
counterfeit mark has been applied thereto, the use of which is likely
to cause confusion, to cause mistake, or to deceive,] shall, if an
individual, be fined not more than $2,000,000 or imprisoned not
III.B.3.a. Intentionally
The term “intentionally” modifies “traffics or attempts to traffic in
goods or services.” Id.; see United States v. Baker, 807 F.2d 427, 429 (5th
Cir. 1986) (quoting legislative history's breakdown of § 2320's two mens
rea elements). It means “that the defendant trafficked in the goods or
services in question deliberately, or 'on purpose.'” See Joint Statement,
130 Cong. Rec. 31,674 (1984).
The government need not prove that the defendant specifically
intended to violate 18 U.S.C. § 2320 or even that he knew his conduct
was illegal. Baker, 807 F.2d at 427-30; United States v. Gantos, 817 F.2d
41, 42-43 (8th Cir. 1987) (affirming district court's refusal to instruct jury
that § 2320 required proof that defendant knew that his act violated the
law).
III.B.4.f. The Counterfeit Mark Must Have Been Used for the
Same Type of Goods or Services for Which the Genuine Mark
Was Registered
Before the March 16, 2006 amendments, § 2320's definition of a
“counterfeit mark” allowed prosecution only if the defendant's mark was
“used in connection with trafficking in goods or services [and was]
identical with, or substantially indistinguishable from, a mark registered
for those goods and services on the principal register in the United States
Patent and Trademark Office.” 18 U.S.C. § 2320(e)(1)(A)(i)-(ii)
(emphasis added) (but see Section III.D.8. of this Chapter concerning
cases involving Olympic symbols). Congress intended this requirement as
an important and explicit distinction between criminal and civil
trademark infringement cases. “[A] plaintiff with a Federal registration
for ... [a mark] on typewriters might have a [civil] Lanham Act remedy
against a defendant who used that mark to identify typing paper, even
though the plaintiff had not registered that mark for use in connection
with typing paper. Under [§ 2320], however, the use of the mark ... on
typing paper would not count as the use of a 'counterfeit mark.'” Joint
III.B.6. Venue
An interesting case involving venue and foreign purchases of
counterfeit trademarked goods is United States v. DeFreitas, 92 F. Supp.
2d 272 (S.D.N.Y. 2000). In DeFreitas , the defendant imported
counterfeit Beanie Babies from China to New Jersey via New York for
eventual sale in New Jersey. Id. at 276. The defendant challenged his
conviction under §§ 2320 and 371 (conspiracy) on the basis of improper
venue in New York, arguing that the substantive offense under § 2320 did
not begin until he received the counterfeit goods in New Jersey. The court
rejected his argument by holding that trafficking is a continuing offense
beginning with obtaining control over the counterfeit goods, continuing
with transport, and ending with the transfer or disposal of the goods. Id.
at 277. Because the offense began when the defendant purchased the
counterfeit goods in China and directed that they be shipped to New
Jersey, venue was proper at any point through which the goods traveled
after they entered the United States, including the Southern District of
New York. Id.
III.C. Defenses
Many general defenses, such as the absence of proper venue or
jurisdiction, are available in every criminal case and their application
needs no further elaboration here. The following discussion addresses
defenses specific to § 2320.
III.E. Penalties
III.E.1. Fines
An individual defendant can be fined a maximum of $2,000,000 for
a first offense or $5,000,000 for subsequent convictions, or twice the
monetary loss or gain. See 18 U.S.C. §§ 2320(a) (trademark fines),
3571(b), (d). A corporate defendant can be fined a maximum fine of
$5,000,000 for a first offense or $15,000,000 for subsequent convictions,
or twice the monetary gain or loss. See 18 U.S.C. §§ 2320(a), 3571(c),
(d).
III.E.2. Imprisonment
The maximum term of imprisonment is 10 years for a first offense and
20 years for subsequent convictions. A defendant can be fined and/or
imprisoned. 18 U.S.C. § 2320(a). A challenge to incarceration, probation,
and supervised release, on the ground that these remedies are not present
in the civil Lanham Act, was rejected in United States v. Foote, No. CR.A.
00-20091-01KHV, 2003 WL 22466158, at *2-3 (D. Kan. 2003), aff'd in
part on other grounds, 413 F.3d 1240 (10th Cir. 2005).
III.E.3. Restitution
Before the 2006 amendments, § 2320 contained no express provision
for restitution, but restitution was properly awarded in § 2320 cases under
18 U.S.C. § 3663A(c)(1)(A)(ii), which provides mandatory restitution to
victims of crimes against property in Title 18, and under Section 5E1.1
of the Sentencing Guidelines, which provides restitution when there is an
identifiable victim and restitution is authorized under 18 U.S.C. § 3663A.
See, e.g., United States v. Lexington, 71 Fed. Appx. 507, 508 (6th Cir.
2003) (affirming contested restitution order under 18 U.S.C. § 3663 and
U.S.S.G. § 5E1.1 following a § 2320 conviction); United States v. Hanna,
No. 02 CR.1364-01 (RWS), 2003 WL 22705133, at *3 (S.D.N.Y. Nov.
17, 2003) (including restitution in sentence for § 2320 conviction). See
also Chapter VIII of this Manual.
The 2006 amendments made the right to restitution explicit. Newly-
amended § 2320(b)(4) now provides that “[w]hen a person is convicted
of an offense under this section, the court, pursuant to sections 3556,
III.E.4. Forfeiture
Forfeiture is covered in Chapter VIII of this Manual.
137
IV.B.3.b.iv. Misappropriation of Only Part of a
Trade Secret . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156
IV.B.3.b.v. Mere Risk of Misappropriation Not Prosecutable,
but Attempts and Conspiracies Are
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156
IV.B.3.c. Knowledge . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 156
IV.B.4. Additional 18 U.S.C. § 1831 Element: Intent to Benefit a
Foreign Government, Foreign Instrumentality, or Foreign
Agent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 158
IV.B.5. Additional 18 U.S.C. § 1832 Elements . . . . . . . . . . . 159
IV.B.5.a. Economic Benefit to a Third Party . . . . . . . . . . 159
IV.B.5.b. Intent to Injure the Owner of the Trade Secret
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 159
IV.B.5.c. Product Produced for or Placed in Interstate or Foreign
Commerce . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 160
IV.B.6. Attempts and Conspiracies, Including the Impossibility
Defense . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 161
IV.C. Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 163
IV.C.1. Parallel Development . . . . . . . . . . . . . . . . . . . . . . . . . 163
IV.C.2. Reverse Engineering . . . . . . . . . . . . . . . . . . . . . . . . . . 163
IV.C.3. Impossibility . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 164
IV.C.4. Advice of Counsel . . . . . . . . . . . . . . . . . . . . . . . . . . . 165
IV.C.5. Claim of Right—Public Domain and
Proprietary Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 165
IV.C.6. The First Amendment . . . . . . . . . . . . . . . . . . . . . . . . 166
IV.C.7. Void-For-Vagueness . . . . . . . . . . . . . . . . . . . . . . . . . . 167
IV.D. Special Issues . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169
IV.D.1. Civil Injunctive Relief for the United States . . . . . . . 169
IV.D.2. Confidentiality and the Use of Protective Orders
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 169
IV.D.3. Extraterritoriality . . . . . . . . . . . . . . . . . . . . . . . . . . . . 172
IV.D.4. Department of Justice Oversight . . . . . . . . . . . . . . . . 173
IV.A. Introduction
“A trade secret is really just a piece of information (such as a customer
list, or a method of production, or a secret formula for a soft drink) that
the holder tries to keep secret by executing confidentiality agreements
with employees and others and by hiding the information from outsiders
by means of fences, safes, encryption, and other means of concealment,
so that the only way the secret can be unmasked is by a breach of contract
or a tort.” ConFold Pac. v. Polaris Indus., 433 F.3d 952, 959 (7th Cir.
2006) (Posner, J.) (citations omitted). Or, as Judge Posner could have
pointed out, it can be unmasked by a criminal act.
Until 1996, no federal statute explicitly criminalized the theft of
commercial trade secrets. Some statutes could punish trade secret theft in
limited situations: 18 U.S.C. § 1905 for the unauthorized disclosure of
government information, including trade secrets, by a government
employee; 18 U.S.C. § 2314 for the interstate transportation of stolen
property, including trade secrets; and 18 U.S.C. §§ 1341, 1343, and 1346
for the use of mail or wire communications in a scheme to use information
in violation of a confidential or fiduciary relationship. See Section IV.F.
of this Chapter.
In 1996, Congress acted to correct the occasional mismatch between
then-existing statutes and commercial trade secret theft by enacting the
Economic Espionage Act of 1996, Pub. L. No. 104-294, 110 Stat. 3489
(1996) (codified at 18 U.S.C. §§ 1831-1839).
This Chapter considers a number of issues arising under the Economic
Espionage Act in depth. A sample indictment and jury instructions appear
at Appendix D. In addition to this Chapter, prosecutors may wish to
consult the following treatises or law review articles: Uniform Trade
IV.B.3.a.iv. Novelty
Unlike patents or copyrights, which require higher degrees of novelty,
trade secrets must possess only “minimal novelty.” Kewanee Oil Co. v.
Bicron Corp., 416 U.S. 470, 476 (1974) (quoting Comment, The Stiffel
Doctrine and the Law of Trade Secrets, 62 Nw. U. L. Rev. 956, 969
(1968)); see also Arco Indus. Corp. v. Chemcast Corp., 633 F.2d 435, 442
(6th Cir. 1980) (same).
In other words, a trade secret must contain some element that is not
known and that sets it apart from what is generally known. “While we do
not strictly impose a novelty or inventiveness requirement in order for
material to be considered a trade secret, looking at the novelty or
uniqueness of a piece of information or knowledge should inform courts
in determining whether something is a matter of general knowledge, skill
or experience.” 142 Cong. Rec. 27, 117 (1996). See, e.g., Buffets, Inc. v.
Klinke, 73 F.3d 965, 968 (9th Cir. 1996) (holding that plaintiff’s recipes
were not trade secrets in part because they lacked the requisite novelty).
IV.B.3.a.v. Secrecy
The key attribute of a trade secret is that the underlying information
“not be[] generally known to ... the public” and that it “not be[] readily
ascertainable through proper means by [] the public.” 18
U.S.C. § 1839(3)(B). The “public” may not necessarily mean the general
public. “[E]ither the phrase ‘readily ascertainable’ or the phrase ‘the
public’ must be understood to concentrate attention on either potential
users of the information, or proxies for them (which is to say, persons who
have the same ability to ‘ascertain’ the information).” United States v.
Lange, 312 F.3d 263, 268 (7th Cir. 2002) (Easterbrook, J.). But see id. at
271-72 (Ripple, J., concurring) (suggesting that this holding is dictum).
In other words, information will not necessarily be a trade secret just
because it is not readily ascertainable by the general public. Under the
Seventh Circuit’s view, the information will not be a trade secret if it is
readily ascertainable by those within the information’s field of specialty.
If a scientist could ascertain a purported trade secret formula only by
gleaning information from publications and then engaging in many hours
of laboratory testing and analysis, the existence of such publications
would not necessarily disqualify the formula as a trade secret under the
EEA, since the scientist’s work would probably not qualify as “readily
ascertainable by the public.” See 18 U.S.C. § 1839(3)(B). But the formula
IV.B.3.b. Misappropriation
IV.B.3.b.i. Types of Misappropriation
Under either § 1831 or § 1832, the defendant must have
misappropriated the trade secret through one of the acts prohibited in
§ 1831(a)(1)-(5) or § 1832(a)(1)-(5). Misappropriation covers a broad
range of acts. It includes not only traditional methods of theft in which
a trade secret is physically removed from the owner’s possession, but also
less traditional methods of misappropriation and destruction such as
copying, duplicating, sketching, drawing, photographing, downloading,
uploading, altering, destroying, photocopying, replicating, transmitting,
delivering, sending, mailing, communicating, or conveying the
information. See 18 U.S.C. §§ 1831(a)(1) (2), 1832(a)(1)-(2). Although
many of these means of misappropriation leave the original property in
the hands of its owner, they reduce or destroy the trade secret’s value
nonetheless. Congress prohibited all types of misappropriation “to ensure
that the theft of intangible information is prohibited in the same way that
the theft of physical items is punished.” H.R. Rep. No. 104-788, at 11
(1996), reprinted in 1996 U.S.C.C.A.N. 4021, 4030.
IV.B.3.c. Knowledge
The first mens rea element in an EEA case is that the defendant
misappropriated the trade secret “knowingly.” Section 1831(a) applies to
anyone who misappropriates a trade secret “knowingly.” Section 1832(a),
by contrast, applies to “[w]hoever, with intent to convert a trade secret,”
engages in misappropriation. This is a distinction without a difference,
because knowing misappropriation is equivalent to the intent to convert.
“A knowing state of mind with respect to an element of the offense
is (1) an awareness of the nature of one’s conduct, and (2) an awareness
IV.C. Defenses
IV.C.1. Parallel Development
According to the EEA’s legislative history, the owner of a trade secret,
unlike the holder of a patent, does not have “an absolute monopoly on
the information or data that comprises a trade secret.” 142 Cong. Rec.
27,116 (1996). Other companies and individuals have the right to
discover the information underlying a trade secret through their own
research and hard work; if they do, there is no misappropriation under the
EEA. Id.
IV.C.3. Impossibility
The defense of impossibility has largely been rejected by courts in
EEA prosecutions. See Section IV.B.6. of this Chapter.
IV.C.7. Void-for-Vagueness
Several defendants have challenged the EEA on grounds that it is
vague or otherwise unconstitutional. Thus far, all such challenges have
been rejected.
In United States v. Hsu, 40 F. Supp. 2d 623 (E.D. Pa. 1999), the
defendant was charged with, among other things, conspiracy to steal trade
secrets in violation of 18 U.S.C. § 1832(a)(5) and attempted theft of
trade secrets in violation of 18 U.S.C. § 1832(a)(4). Hsu moved to
dismiss, arguing that the EEA was unconstitutionally vague on numerous
grounds.
In denying Hsu’s motion to dismiss, the court noted that a statute is
not unconstitutionally vague just because “Congress might, without
difficulty, have chosen ‘clearer and more precise language’ equally capable
of achieving the end which it sought.” Hsu, 40 F. Supp. 2d at 626
(quoting United States v. Powell, 423 U.S. 87, 94 (1975) (citation
omitted)). Because the First Amendment was not implicated, Hsu’s void-
for-vagueness challenge could succeed only if the EEA were vague as
applied to his conduct and as applied to “the facts of the case at hand.”
Id. at 626-27. Hsu argued that the First Amendment was implicated
because the Bristol-Meyers Squibb “employee who aided the Government
‘sting’ operation by posing as a corrupt employee [had] a right freely to
express himself and exchange information with the defendant, or with
anyone else he [thought was] a potential employer.” Id. at 627. The court
disagreed. It noted first that Hsu lacked standing to raise the victim’s
employee’s purported First Amendment rights. Id. And even if Hsu had
standing, the court said, the employee had knowingly participated in a
government sting operation, not in a job interview with a potential
employer. Id. Therefore, no First Amendment interests were implicated.
Id.
The court also rejected Hsu’s argument that the term “related to or
included in a product that is produced for or placed in interstate or
foreign commerce” is unacceptably vague. Id. Prior First Amendment
decisions disapproving of the term “related” had no bearing on the use of
“related to or included in” in the EEA, which the court found “readily
understandable to one of ordinary intelligence, particularly here, where
the defendant appears to be well versed as to [the nature of the
technology at issue].” Id.
IV.D.3. Extraterritoriality
Federal criminal laws are generally presumed not to apply to conduct
outside the United States or its territories unless Congress indicates
otherwise. See, e.g., United States v. Corey, 232 F.3d 1166, 1170 (9th
Cir. 2000). Congress made an exception for the EEA. The EEA expressly
applies to conduct outside the United States if (1) the offender is a citizen
IV.E. Penalties
IV.E.1. Statutory Penalties
IV.E.1.a. Imprisonment and Fines
Reflecting the more serious nature of economic espionage sponsored
by a foreign government, the maximum sentence for a defendant
convicted under 18 U.S.C. § 1831 is 15 years’ imprisonment and a fine
of $500,000 or twice the monetary gain or loss, or both, whereas the
maximum sentence for a defendant convicted under 18 U.S.C. § 1832 is
10 years’ imprisonment and a fine of $250,000 or twice the monetary
gain or loss, or both. See 18 U.S.C. §§ 1831(a)(4), 1832(a)(5). Similarly,
IV.E.1.c. Restitution
The Mandatory Victims Restitution Act of 1996 (“MVRA”), codified
at 18 U.S.C. § 3663A, requires the court to order restitution in all
convictions for, among others, any “offense against property, including
any offense committed by fraud and deceit,” and “in which an identifiable
victim or victims has suffered a physical injury or pecuniary loss.” See 18
U.S.C. § 3663A(c)(1)(A)(ii), (B). For cases involving “damage to or loss
or destruction of property of a victim of the offense,” the MVRA requires
that the defendant return the property to its owner. If return of the
property is “impossible, impracticable, or inadequate,” the MVRA requires
the defendant to pay an amount equal to the property’s value on the date
of its damage, destruction, or loss, or its value at the time of sentencing,
whichever is greater, less the value of any part of the property that is
returned. See 18 U.S.C. § 3663A(b)(1).
The theft of trade secrets meets § 3663A’s definition of property
offenses that require restitution. Section 3663A’s legislative history
indicates that restitution is required in “violent crimes, property and fraud
crimes under title 18, product tampering, and certain drug crimes.” S.
183
V.B.2.a. Trafficking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 201
V.B.2.b. In a Technology, Product, Service, or Part Thereof
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 202
V.B.2.c. Purpose or Marketing of Circumvention Technology
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 203
V.B.2.c.1. Primarily Designed or Produced . . . . . . . . 203
V.B.2.c.2. Limited Commercially Significant Purpose Other
Than Circumvention . . . . . . . . . . . . . . . . . . . . . . 204
V.B.2.c.3. Knowingly Marketed for Circumvention . . 204
V.B.3. Trafficking in Tools, Devices, and Services to Circumvent
Copy Controls—17 U.S.C. §§ 1201(b)(1) and 1204 . 205
V.B.3.a. Circumventing . . . . . . . . . . . . . . . . . . . . . . . . . . 206
V.B.3.b. Technological Measure That Effectively Protects a Right
of a Copyright Owner Under This Title (“Copy Control”) 206
V.B.4. Alternate § 1201(b) Action—Trafficking in Certain Analog
Videocassette Recorders and Camcorders . . . . . . . . . 208
V.B.5. Falsifying, Altering, or Removing Copyright Management
Information—17 U.S.C. § 1202 . . . . . . . . . . . . . . . . . 208
V.C. Defenses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 209
V.C.1. Statute of Limitations . . . . . . . . . . . . . . . . . . . . . . . . 209
V.C.2. Librarian of Congress Regulations . . . . . . . . . . . . . . . 210
V.C.3. Certain Nonprofit Entities . . . . . . . . . . . . . . . . . . . . . 210
V.C.4. Information Security Exemption . . . . . . . . . . . . . . . . 210
V.C.5. Reverse Engineering and Interoperability of Computer
Programs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 211
V.C.6. Encryption Research . . . . . . . . . . . . . . . . . . . . . . . . . 213
V.C.7. Restricting Minors' Access to Internet . . . . . . . . . . . . . 215
V.C.8. Protection of Personally Identifying Information . . . . 215
V.C.9. Security Testing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 216
V.C.10. Constitutionality of the DMCA . . . . . . . . . . . . . . . . 216
V.A. Introduction
V.A.1. DMCA's Background and Purpose
With the advent of digital media and the Internet as a means to
distribute such media, large-scale digital copying and distribution of
copyrighted material became easy and inexpensive. In response to this
development, and to prevent large-scale piracy of digital content over the
Internet, in 1997 the World Intellectual Property Organization (WIPO)
responded with two treaties, the Copyright Treaty, and the Performances
and Phonograms Treaty, to prohibit pirates from defeating the digital
locks that copyright owners use to protect their digital content from
unauthorized access or copying. Specifically, Article 11 of the WIPO
Copyright Treaty prescribes that contracting states
shall provide adequate legal protection and effective legal remedies
against the circumvention of effective technological measures that are
used by authors in connection with the exercise of their rights under
this Treaty or the Berne Convention and that restricts acts, in respect
of their works, which are not authorized by the authors concerned or
permitted by law.
See WIPO Copyright Treaty, Apr. 12, 1997, S. Treaty Doc. No. 105-17,
art. 11 (1997); WIPO Performances and Phonograms Treaty, Apr. 12,
1997, S. Treaty Doc. No. 105-17, art. 18 (1997) (same with respect to
performers or producers of phonograms). The United States signed these
treaties on April 12, 1997, and ratified them on October 21, 1998. See
144 Cong. Rec. 27,708 (1998) (Resolution of Ratification of Treaties).
To implement these treaties, Congress enacted Title I of the Digital
Millennium Copyright Act (DMCA) on October 28, 1998, with the twin
Access Copy
V.B.1.a. Circumventing
To “circumvent” an access control “means to descramble a scrambled
work, to decrypt an encrypted work, or otherwise to avoid, bypass,
remove, deactivate, or impair a technological measure, without the
authority of the copyright owner.” 17 U.S.C. § 1201(a)(3)(A). Thus, to
establish this element, the government first must prove that the defendant
1) bypassed a technological measure, and 2) did so without the authority
of the copyright owner.
“Circumvention requires either descrambling, decrypting, avoiding,
bypassing, removing, deactivating or impairing a technological measure
qua technological measure.” I.M.S. Inquiry Mgmt. Sys., Ltd. v. Berkshire
Info. Sys., Inc., 307 F. Supp. 2d 521, 532 (S.D.N.Y. 2004); see also
Egilman v. Keller & Heckman, 401 F. Supp. 2d 105, 113 (D.D.C. 2005)
(same); Universal City Studios, Inc. v. Corley, 273 F.3d 429, 443 (2d Cir.
V.B.2.a. Trafficking
Section 1201(a)(2) states that “[n]o person shall manufacture,
import, offer to the public, provide, or otherwise traffic in” a technology
or service that unlawfully circumvents an access control. To “traffic” in
such technology means to engage either in dealings in that technology or
service or in conduct that necessarily involves awareness of the nature of
the subject of the trafficking. Universal City Studios, Inc. v. Reimerdes,
111 F. Supp. 2d 294, 325 (S.D.N.Y. 2000). To “provide” technology
means to make it available or to furnish it. Id. The phrase “or otherwise
traffic in” modifies and gives meaning to the words “offer” and “provide.”
Id. Thus, “the anti-trafficking provision of the DMCA is implicated where
one presents, holds out or makes a circumvention technology or device
available, knowing its nature, for the purpose of allowing others to acquire
it.” Id. This standard for “trafficking,” therefore, hinges on evaluating the
trafficker's purpose for making the circumvention technology available.
See id. at 341 n.257 (“In evaluating purpose, courts will look at all
relevant circumstances.”). Significantly, however, the government need
not prove “an intent to cause harm” to establish the trafficking element.
Cf. Universal City Studios, Inc. v. Corley, 273 F.3d 429, 457 (2d Cir.
2001).
This standard is particularly helpful for determining whether a
defendant has trafficked online in unlawful circumvention technology. For
example, courts may view a defendant's trafficking to include offering
circumvention technology for download over the Internet, or posting links
to Web sites that automatically download such technology when a user
is transferred by hyperlink, where the purpose of such linking is to allow
others to acquire the circumvention technology. See, e.g., Reimerdes, 111
F. Supp. 2d at 325, 341 n.257 (holding that offering and providing for
download a computer program to circumvent DVD access controls for the
purpose of disseminating the program satisfies trafficking element of
§ 1201(a)(2)). In addition, at least one court has found that posting a
hyperlink to web pages “that display nothing more than the
V.B.3.a. Circumventing
To “circumvent protection afforded by a technological measure,” as
set forth in 17 U.S.C. § 1201(b), “means avoiding, bypassing, removing,
deactivating, or otherwise impairing a technological measure.” 17 U.S.C.
§ 1201(b)(2)(A). To establish this element, the government must show
that the defendant trafficked in technology allowing the end user to
bypass a copy or use control that “effectively protects the right of a
copyright owner.” 17 U.S.C. § 1201(b)(1), (b)(2)(B). Courts have found
that the following technologies circumvent copy controls: (1) a computer
program that removes user restrictions from an “ebook” to make such files
“readily copyable” and “easily distributed electronically,” United States
v. Elcom , 203 F. Supp. 2d 1111, 1118-19 (N.D. Cal. 2002);
(2) technology that bypasses copy controls intended to prevent the
copying of streaming copyrighted content, RealNetworks, Inc. v.
Streambox, Inc., No. 2:99CV02070, 2000 WL 127311, at *6-*8 (W.D.
Wash. Jan. 18, 2000); and (3) technology that bypasses a scheme
intended to “control copying of [encrypted] DVDs,” 321 Studios v.
Metro Goldwyn Mayer Studios, Inc., 307 F. Supp. 2d 1085, 1097 (N.D.
Cal. 2004). Further, at least one court has held that an unlicensed DVD
player that can bypass a DVD's access and copy controls unlawfully
“avoids and bypasses” (i.e., circumvents) the DVD's copy control
pursuant to § 1201(b)(2)(A). Id. at 1098.
V.C. Defenses
The DMCA provides for several statutory defenses, exceptions, and
even “exemptions” to the anti-circumventing and anti-trafficking
prohibitions set forth in 17 U.S.C. § 1201. As the following discussion
demonstrates, these defenses do not apply uniformly to the anti-
circumvention (§ 1201(a)(1)(A)) and anti-trafficking provisions
(§ 1201(a)(2), (b)).
V.C.10.c. Vagueness
Courts have also rejected challenges to the DMCA under the Fifth
Amendment on vagueness grounds. Vagueness may invalidate a statute if
the statute either (1) fails to provide the kind of notice that will enable
ordinary people to understand what conduct it prohibits, or (2) authorizes
or encourages arbitrary and discriminatory enforcement. City of Chicago
v. Morales, 527 U.S. 41, 56 (1999). Defendants typically argue that the
DMCA is vague or otherwise infirm because it bans only those
circumvention tools that are primarily designed to circumvent access or
copy controls to enable copyright infringement, not those enabling fair
uses. See, e.g., Elcom, 203 F. Supp. 2d at 1122. This issue has arisen with
respect to § 1201(b), which prohibits trafficking in any copy control
circumvention technology. Id. at 1124.
Courts have held, however, that the DMCA is not unconstitutionally
vague, because it imposes a blanket ban on all circumvention tools
regardless of whether the ultimate purpose for their use is fair or
infringing. Id. “Congress thus recognized that most uses of tools to
circumvent copy restrictions would be for unlawful infringement purposes
rather than for fair use purposes and sought to ban all circumvention tools
that 'can be used' to bypass or avoid copy restrictions.” Id. at 1125
(quoting S. Rep. No. 105-190, at 29-30). Moreover, Congress's intent to
V.D. Penalties
For the first criminal violation of Title I of the DMCA (§§ 1201,
1202), the maximum penalty is five years' imprisonment, a $500,000 fine,
or both. 17 U.S.C. § 1204. For subsequent offenses, each of those
punishments can be doubled. Id. For a more complete discussion of
sentencing issues, see Chapter VIII of this Manual.
227
VI.E.3. Restitution . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 239
VI.E.4. Forfeiture . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 240
VI.E.5. Sentencing Guidelines . . . . . . . . . . . . . . . . . . . . . . . . 240
VI.E.5.a. Retail Value of Copyrighted Goods vs. Counterfeit
Labels, Documentation, and Packaging . . . . . . . . . . . 240
VI.E.5.b. Number of Infringing Copyrighted Goods vs.
Number of Labels, Documents, or Packaging Items . . 242
VI.F. Other Charges to Consider . . . . . . . . . . . . . . . . . . . . . . . . 242
VI.B. Elements
To obtain a conviction under 18 U.S.C. § 2318, the government must
prove five elements:
1. The defendant acted knowingly
2. The defendant trafficked
3. In labels affixed to, enclosing, or accompanying (or designed to be
affixed to, enclose, or accompany) a phonorecord, computer
program, motion picture or other audiovisual work, literary,
pictorial, graphic, or sculptural work, or work of visual art, or
documentation or packaging for such works (i.e., trafficked either
in documentation or packaging for such works itself, or in labels
for such documentation or packaging)
4. The documentation or packaging were counterfeit, or the labels
were counterfeit or illicit
5. Federal jurisdiction is satisfied because:
a. the offense occurred in special maritime territories or other
areas of special jurisdiction of the United States;
b. the offense used or intended to use the mail or a facility of
interstate or foreign commerce;
c. the counterfeit or illicit labels were affixed to, enclosed, or
accompanied copyrighted materials (or were designed to); or
VI.B.6. Venue
The proper venue for a § 2318 prosecution is addressed by general
principles governing venue in criminal cases. Particular attention should
be paid to offenses that involve the use of the mail or transportation in
interstate or foreign commerce, which will occur in most § 2318 offenses.
VI.E. Penalties
Section 2318(a) provides for a fine or imprisonment or both, as well
as forfeiture. Restitution is also available.
VI.E.1. Fines
Under § 2318(a), a defendant may be “fined under this title [18],”
which is an indirect reference to 18 U.S.C. § 3571 (“Sentence of fine”).
Under 18 U.S.C. § 3571, an individual can be fined up to $250,000 and
an organization can be fined up to $500,000, or either can be fined twice
the offense’s pecuniary gain or loss, without limit. 18 U.S.C. § 3571(a)-
(d).
VI.E.2. Imprisonment
The maximum term of imprisonment is five years. 18 U.S.C.
§ 2318(a).
VI.E.3. Restitution
Although § 2318 does not mention restitution, 18 U.S.C. § 3663A
provides for mandatory restitution to victims of certain crimes, including
crimes against property in Title 18, of which § 2318 is one. 18 U.S.C.
VI.E.4. Forfeiture
When a person is convicted under § 2318, the court must order the
forfeiture and destruction or other disposition of all counterfeit or illicit
labels, any items that these labels were affixed to or intended to be affixed
to, and any equipment, device, or material used to create these labels. See
18 U.S.C. § 2318(d). For more on forfeiture, see Chapter VIII of this
Manual.
245
the invention throughout the United States or importing the invention
into the United States. See Eldred , 537 U.S. at 216; 35 U.S.C.
§ 154(a)(1). Currently, a patent grant lasts for a term beginning on the
date the U.S. Patent and Trademark Office issues the patent and ending
20 years from the date on which the patentee filed his or her application
for a patent grant. 35 U.S.C. § 154(a)(2).
Although patents and copyrights share a common constitutional
source (and the concomitant requirement that these exclusive rights are
for "limited times"), they differ in several meaningful respects. First,
copyrights grant an author the right to exclude certain uses of the author's
expression of an idea contained in an "original work of authorship,"
whereas patents grant an author the right to exclude others from making,
using, and selling devices or processes that embody the claimed invention.
Second, in exchange for granting the patentee this right to exclude, the
patentee must publicly disclose the invention. Eldred, 537 U.S. at 216.
"For the author seeking copyright protection, in contrast, disclosure is the
desired objective, not something exacted from the author in exchange for
the copyright." Id. at 216. Third, a copyright gives the holder no
monopoly on any knowledge or idea; a reader of an author's writing may
make full use of any fact or idea acquired by reading the writing. See 17
U.S.C. § 102(b). A patent, on the other hand, gives the patentee a
monopoly on his invention to prevent the full use by others of the
knowledge embodied in the patent. Eldred, 537 U.S. at 217.
It is also worth considering the difference between a patent and a
trade secret. The first difference is naturally that trade secret information
is protected only if it is secret (see Section IV.B.3.a.v. of this Manual),
whereas a patent is protected even after disclosure. During the patent
process, a trade secret contained in a patent application may lose its trade-
secret protection through disclosure only to gain patent protection. (See
Section IV.B.3.a.vi. of this Manual). Second, a patent gives its owner an
exclusive right to his invention, even against another who discovered the
patented invention independently, whereas a trade secret, like a copyright,
gives its owner no protection against independent discovery. Confold Pac.,
Inc. v. Polaris Indus., 433 F.3d 952, 958-59 (7th Cir. 2006) (Posner, J.).
251
VIII.C.1.f. Offense Not Committed for Commercial Advantage or
Private Financial Gain Reduces the Offense Level by
2—U.S.S.G. § 2B5.3(b)(4) [before October 24, 2005:
§ 2B5.3(b)(3)] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 267
VIII.C.1.g. Offense Involving Risk of Serious Bodily Injury or
Possession of a Dangerous Weapon Increases the Offense
Level by 2—U.S.S.G. § 2B5.3(b)(5) [before October 24,
2005: § 2B5.3(b)(4)] . . . . . . . . . . . . . . . . . . . . . . . . . 268
VIII.C.1.h. Decryption or Circumvention of Access Controls
Increases the Offense Level—U.S.S.G. § 3B1.3 . . . . . 268
VIII.C.1.i. Upward Adjustment for Harm to Copyright or Mark-
Owner's Reputation, Connection with Organized Crime, or
Other Unspecified Grounds . . . . . . . . . . . . . . . . . . . . 269
VIII.C.1.j. Vulnerable Victims—U.S.S.G. § 3A1.1(b) . . . 269
VIII.C.1.k. No Downward Departure for the Victim's
Participation in Prosecution . . . . . . . . . . . . . . . . . . . . 269
VIII.C.2. Offenses Involving the Economic Espionage Act . 270
VIII.C.2.a. Applicable Guideline is § 2B1.1, Except for Attempts
and Conspiracies . . . . . . . . . . . . . . . . . . . . . . . . . . . . 270
VIII.C.2.b. Base Offense Level—U.S.S.G. § 2B1.1(a) . . . 270
VIII.C.2.c. Loss—U.S.S.G. § 2B1.1(b)(1) . . . . . . . . . . . . 270
VIII.C.2.c.i. Use Greater of Actual or Intended Loss . 271
VIII.C.2.c.ii. Reasonable Estimates Acceptable . . . . . 271
VIII.C.2.c.iii. Methods of Calculating Loss . . . . . . . . 271
VIII.C.2.d. Intent to Benefit a Foreign Government,
Instrumentality, or Agent—U.S.S.G. § 2B1.1(b)(5) . . 277
VIII.C.2.e. Sophisticated Means—U.S.S.G. § 2B1.1(b)(9)(C)
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 277
VIII.C.2.f. Upward Departure Considerations— U.S.S.G. § 2B1.1
cmt. n.19(A) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 278
VIII.C.2.g. Downward Departure Considerations—
U.S.S.G. § 2B1.1 cmt. n.19(C) . . . . . . . . . . . . . . . . . 278
VIII.C.2.h. Abuse of a Position of Trust—U.S.S.G. § 3B1.3
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 278
VIII.C.1.c.i. Formula
The infringement amount is generally calculated by multiplying the
number of infringing goods by the goods' retail value. See U.S.S.G.
§ 2B5.3 cmt. n.2(A),(B).
If the defendant infringed a variety of items, the infringement amount
is the sum of the individual infringement amounts for each type of item.
Id. cmt. n.2(D). The infringement amount for each type of item is
calculated independently of the others, including whether the retail value
should be that of an infringing (counterfeit) item or an infringed
(legitimate) item. Id. See Section VIII.C.1.c.iii. of this Chapter. The
individual infringement amounts are then aggregated into a total
infringement amount, which is then plugged into the loss table in
U.S.S.G. § 2B1.1. See Section VIII.C.1.c.v. of this Chapter.
VIII.D. Restitution
“'The principle of restitution is an integral part of virtually every
formal system of criminal justice, of every culture and every time. It holds
that, whatever else the sanctioning power of society does to punish its
wrongdoers, it should also ensure that the wrongdoer is required to the
degree possible to restore the victim to his or her prior state of well-
Civil
Infringing Items Yes. 17 U.S.C. §§ 509(a), 602-603
(prohibiting imports).
Facilitating Property Yes. 17 U.S.C. § 509(a) (plates, molds,
masters and other equipment used to
make infringing copies).
Proceeds Yes. 18 U.S.C. § 981(a)(1)(C).
Criminal
Infringing Items Yes. 17 U.S.C. §§ 506(b), 602-603;
28 U.S.C. § 2461(c) (allowing criminal
forfeiture where property could be
seized civilly).
Facilitating Property Yes. 17 U.S.C. § 506(b);
28 U.S.C. § 2461.
Proceeds Yes. 18 U.S.C. § 981(a)(1)(C);
28 U.S.C. § 2461(c).
VIII.E.4.a. Proceeds
The government can forfeit the proceeds of 18 U.S.C. §§ 2318, 2319,
2319A, and 2320 offenses in civil forfeiture proceedings. Under the Civil
Asset Forfeiture Reform Act of 2000 (“CAFRA”) amendments to
18 U.S.C. § 981(a)(1)(C), a general civil forfeiture statute, the
government can seek civil forfeiture of “[a]ny property, real or personal,
which constitutes or is derived from proceeds traceable to,” among other
things, any offense defined as a specified unlawful activity in the money
laundering provisions at 18 U.S.C. § 1956(c)(7). Specified unlawful
activities include criminal copyright infringement and trademark
counterfeiting, 18 U.S.C. § 1956(c)(7)(D) (citing 18 U.S.C. §§ 2319,
2320), as well as any offense listed as racketeering activity in
18 U.S.C. § 1961(1). Section 1961, in turn, lists not only §§ 2319 and
2320 violations, but also violations of 18 U.S.C. § 2318 (counterfeit
labels, documentation, and packaging for copyrighted works) and § 2319A
VIII.E.5.a. Proceeds
The government can obtain criminal forfeiture of IP crime proceeds
whenever those proceeds could be forfeited civilly: 18 U.S.C. §§ 2318,
2319, 2319A, and 2320. This is because CAFRA generally provided that
criminal forfeiture is available whenever civil forfeiture is available:
If a person is charged in a criminal case with a violation of an Act of
Congress for which the civil or criminal forfeiture of property is
authorized, the Government may include notice of the forfeiture in
the indictment or information pursuant to the Federal Rules of
Criminal Procedure. If the defendant is convicted of the offense giving
rise to the forfeiture, the court shall order the forfeiture of the
property as part of the sentence in the criminal case pursuant to the
Federal Rules of Criminal Procedure and section 3554 of title 18,
United States Code. The procedures in section 413 of the Controlled
Substances Act (21 U.S.C. § 853) apply to all stages of a criminal
forfeiture proceeding, except that subsection (d) of such section
applies only in cases in which the defendant is convicted of a violation
of such Act.
28 U.S.C. § 2461(c). As discussed above, the offenses for which civil
forfeiture is available are enumerated in 18 U.S.C. § 981, and include any
offense constituting “specified unlawful activity” under
18 U.S.C. § 1956(c)(7), the money laundering statute. Section
1956(c)(7)'s list of “specified unlawful activity” includes, directly or
indirectly, violations of 18 U.S.C. §§ 2318, 2319, 2319A, and 2320.
Where a defendant has engaged in a monetary transaction involving
the proceeds of an intellectual property offense, “knowing that the
property involved in a financial transaction represents the proceeds of
some form of unlawful activity”—regardless of whether the crime is listed
in § 1956(c)(7)—the defendant may also be charged, and the proceeds
subject to forfeiture, under the money laundering statute directly. See
United States. v. Turner, 400 F.3d 491 (7th Cir. 2005) (holding that the
defendant need not know the actual source of the money, but only that
it came from “some illegal activity”); see also United States v. Khalil, No.
IX.A. Introduction
In determining whether to charge an intellectual property crime,
federal prosecutors should generally weigh the same considerations that
are weighed with respect to any other federal offense. The principal
resource is Chapter 9-27.000 of the United States Attorneys' Manual
(USAM) (“Principles of Federal Prosecution”). Ordinarily, the prosecutor
“should commence or recommend Federal prosecution if he/she believes
that the person's conduct constitutes a Federal offense and that the
admissible evidence will probably be sufficient to obtain and sustain a
conviction.” USAM 9-27.220.
This directive is not absolute. Even a provable case may be declined
in three situations: when prosecution would serve no substantial federal
307
interest; when the person is subject to effective prosecution in another
jurisdiction; and when there exists an adequate non-criminal alternative
to prosecution. Id. Broken down further, the relevant considerations
include:
• The federal interest in intellectual property crimes, which
includes:
• Federal law enforcement priorities.
• The nature and seriousness of the offense.
• The deterrent effect of prosecution.
• The individual's culpability in connection with the offense.
• The individual's criminal history.
• The individual's willingness to cooperate in the investigation
or prosecution of others.
• The probable sentence and other consequences of conviction.
• Whether the person is subject to prosecution in another
jurisdiction
• The adequacy of alternative non-criminal remedies
• Special considerations for deciding whether to charge
corporations
This chapter briefly discusses how some of these factors apply
specifically to intellectual property crimes.
Although the government may prosecute even if the victim has not
exhausted its civil and administrative remedies, the government should
consider the victim's pursuit of alternative remedies. The putative
defendant's conduct in response should also be examined.
315
X.C.1.b. Distinction Between “Assistance” and “Gifts” . . 328
But justice, though due to the accused, is due to the accuser also....
We are to keep the balance true.
X. Victims 317
evidence, determines that testimony by the victim would be
materially altered if the victim heard other testimony at that
proceeding
8. The right to be treated with fairness and with respect for the
victim's dignity and privacy
See 18 U.S.C. § 3771(a), (c)(1); AG Guidelines, Art. I.B. Apart from these
enumerated rights, the prosecutor has an independent obligation under
the Act to advise the victim of his or her right to counsel in connection
with the rights established by the Act. See 18 U.S.C. § 3771(c)(2); AG
Guidelines, Art. I.C.
For purposes of enforcing these rights, the Justice for All Act defines
a victim as “a person directly and proximately harmed as a result of the
commission of a Federal offense or an offense in the District of
Columbia.” See 18 U.S.C. § 3771(e) (emphasis added); see also AG
Guidelines, Art. II.D.1. A victim may be an individual, a corporation,
company, association, firm, partnership, society, or joint stock company.
See 1 U.S.C. § 1 (defining “person”); AG Guidelines, Art. II.D.1. In
contrast, a “person whose injuries stem only indirectly from an offense is
In a case where the court finds that the number of crime victims
makes it impracticable to accord all of the crime victims the rights
described in subsection (a), the court shall fashion a reasonable
procedure to give effect to this chapter that does not unduly
complicate or prolong the proceedings.
The Act did not alter other provisions that protect victimized rights-
holders. In all criminal prosecutions, a pre-sentence report must contain
verified information containing an assessment of the impact on any
individual against whom the offense has been committed. Fed. R. Crim.
P. 32(d)(2)(B). Additionally, most intellectual property statutes guarantee
victims (including producers and sellers of legitimate works, rights-
holders, and their legal representatives) the right to submit a victim
impact statement identifying the extent and scope of their injury and loss
prior to sentencing. See 18 U.S.C. §§ 2319(e), 2319A(d), 2319B(e),
2320(d).
X. Victims 319
X.B. The Victim's Role in the Criminal
Prosecution
The fact that victims of IP crime have access to civil remedies raises
several issues during criminal prosecution.
X. Victims 321
First, it is often the better practice for the prosecutor to defer to the
other parties to suggest a global disposition rather than be the first to
suggest it. By adopting this approach, the prosecutor is less likely to create
the appearance of overreaching:
[T]he government can neither be, nor seem to be, trading money for
relief or insulation from criminal prosecution or sentencing
consequences. Such a trade-off not only would undermine the
integrity of the prosecutorial process, but also raises formidable
fairness concerns, with wealthy defendants better able to reach global
settlements than poor ones.
***
The civil and regulatory laws of the United States frequently overlap
with the criminal laws, creating the possibility of parallel civil and
criminal proceedings, either successive or simultaneous. In the
absence of substantial prejudice to the rights of the parties involved,
such parallel proceedings are unobjectionable under our jurisprudence.
Securities & Exch. Comm'n v. Dresser Indus., Inc., 628 F.2d 1368, 1374
(D.C. Cir. 1980) (en banc) (footnote omitted). The topic of parallel civil
suits is complex and largely beyond the scope of this Manual. For a more
extensive discussion of parallel proceedings, see U.S. Department of
Justice, Federal Grand Jury Practice ch. 12 (Office of Legal Education
2000). The following is a brief summary.
X. Victims 323
future infringement and seizure or impoundment of infringing goods. 15
U.S.C. §§ 1116, 1118 (trademark); 17 U.S.C. §§ 502 (copyright), 503
(same), 1101 (bootlegged recordings of live musical performances),
1203(b) (DMCA); 18 U.S.C. § 2318(f)(2)(A), (B) (illicit labels and
counterfeit labels, documentation, and packaging for copyrighted works).
Advantages
Disadvantages
• The defendant can compel discovery in the civil case, which may
generate inconsistent witness statements and provide insight into
X. Victims 325
the prosecution's case. As a result, some prosecutors will seek to
stay the civil case while the criminal case proceeds.
X. Victims 327
X.C.1. Gift Issues
X. Victims 329
X.C.1.b.i. Assistance from Victims and Related Parties
X. Victims 331
private investigator should be asked to immediately cease any further
investigation after the referral is made.
X.C.1.b.iii. Cash
There also may be instances when the victim will not choose to seek
court approval of authority to retain and destroy illegal goods, yet offers
the Department free storage at its facilities or elsewhere during the
pendency of the Department's case. It generally is permissible to accept
such an offer. However, depending on the amount of time and space used
for storage, the company's offer to pay for storage may cross the line from
being permissible assistance to an impermissible gift if the market value
of the storage space is so exorbitant that continuing acceptance of free
storage could raise a question of an appearance of impropriety. In such
circumstances, a Department employee should consult with the assigned
attorney and the employee or attorney's Deputy Designated Agency
Ethics Official (DDAEO) before continuing to accept the free use of
storage space.
X. Victims 333
X.C.1.b.v. Resources Donated for Ongoing Use by Law
Enforcement
X. Victims 335
DDAEO must decide whether free expert services are appropriate to
accept, and whether the government's impartiality may or will be
questioned in these circumstances.
The AAG/A also must approve gifts of cash and gifts that are not case-
specific, including gifts that will be used by the Department for purposes
in addition to or after the conclusion of a particular investigation,
prosecution, or litigation.
X. Victims 337
• Approval of acceptance must be coordinated among the
relevant offices.
Component heads must ensure that a Gift Donation Form and a Gift
Acceptance Form are completed for each gift acceptance approved by their
respective component. The completed forms must be forwarded to
Property Management Services, Facilities and Administration Services
Staff, Justice Management Division.
X. Victims 339
Other professional conduct issues may arise because of assistance and
gifts provided to the government. Each issue will require individual
analysis, and questions may be directed to the Professional Responsibility
Officer (PRO) in each office or to the Department's Professional
Responsibility Advisory Office (PRAO).
An employee also should consider who the donor is. If the donor is an
industry leader, the employee should avoid actions that appear to create
a competitive advantage for that entity. If the donor is a trade association
or combination of affected entities that is involved in ongoing monitoring
or investigation to protect the industry as a whole, the offer may be
considered more impartial. See Commonwealth v. Ellis, 708 N.E.2d 644,
649 (Mass. 1999) (holding that likelihood of influence on a prosecutor's
charging decisions is reduced when the resources are devoted to
investigating industry-related offenses rather than for the benefit of one
particular victim).
X. Victims 341
activities. If it appears that the Department's actions are influenced
heavily by a private party, the Department's litigating posture and the
public's respect will be weakened. A jury may vote against the
Department's position because it perceives the Department is acting on
behalf of a private party rather than as a representative of the United
States' interests. In extreme cases, a court may conclude that the
Department's acceptance of a gift created a conflict of interest and
impaired the prosecutor's independence. Cf. Eubanks, 927 P.2d at 322.
Of course, the standard of appropriate behavior is not whether a matter
will be dismissed, but whether the appearance of impropriety or the lack
of independence outweighs the benefit of the proffered gift or assistance.
The Department, by its actions, must maintain the public's confidence in
and respect for the criminal process, and the Department's reputation for
fairness generally.
X. Victims 343
Appendix A
Commonly Charged
Intellectual Property Crimes
343
Trafficking in Counterfeit Trademarks, Service Marks, or
Certification Marks
18 U.S.C. § 2320(a)
Chapter III
Elements
Defenses
Chapter II
[5. [optional] That the act of infringement was for the purpose of
commercial advantage or private financial gain]
5. That the defendant knew or should have known that the works
were intended for commercial distribution [and]
Elements 1, 2 & 3 are the same as the base felony elements except that
any infringement of the copyright is covered, not just infringement by
reproduction or distribution.
Defenses
Fair use: Allows otherwise infringing use of a work for purposes such as
(but not limited to) criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or research.
Section 506(a)(1)(A)
Section 506(a)(1)(C)
18 U.S.C. § 2319B
Section II.F.
Elements
3. That such use, or attempted use of the device, was without the
authorization of the copyright owner
18 U.S.C. § 2318
Chapter VI
Elements
[documentation/packaging]
2. That the
18 U.S.C. § 2319A
Section II.F.
Offense
Section V.B.
Defenses
18 U.S.C. § 1832
Chapter IV
Elements
Defenses
18 U.S.C. § 1831
Chapter IV
Elements
Section IV.F.
365
Appendix G
Intellectual Property
Contact List
Washington, DC 20530
Tel: 202-514-1026
Fax: 202-514-6113
http://www.cybercrime.gov
http://www.usdoj.gov
367
National Intellectual Property Rights Coordination Center
Washington, DC 20229
http://www.ice.gov
Tel: 202-344-2410
Fax: 202-344-1920
E-mail: iprcenter@dhs.gov
Washington, DC 20535
http://www.fbi.gov
Tel: 202-324-5613
Fax: 202-324-9197
E-mail: leslie.bryant@ic.fbi.gov
http://www.cbp.gov/
Tel: 202-572-8710
Fax: 202-572-8744
E-mail: hqiprbranch@dhs.gov
E-mail: iprr.questions@dhs.gov
http://www.cbp.gov/xp/cgov/import/commercial_enforcement/ip
r/iprr_intro.xml
Tel: 202-344-1440
Fax: 202-344-1969
E-mail: traderelations@dhs.gov
http://www.cbp.gov/xp/cgov/toolbox/about/organization/comm_
staff_off/trade_relations.xml
Fairfax, VA 22030
Tel: 703-293-8005
Fax: 703-293-9127
Washington, DC 20260
Tel: 202-268-4267
Fax: 202-268-7316
http://www.usps.com/postalinspectors/
Rockville, MD 20855
Tel: 301-294-4030
Fax: 301-594-1971
Bethesda, MD 20814
Fax: 301-504-0124
http://www.cpsc.gov
E-mail: info@cpsc.gov
Dennis Blasius
Pewaukee, WI 53072
Tel: 262-650-1216
Fax: 262-650-1217
Cell: 414-899-8802
E-mail: dblasius@cpsc.gov
1 Huntington Way
Fairmont, WV 26554
Fax: 304-363-9065
http://www.ic3.gov
Tel.: 202-514-0000
Tel.: 202-514-1026
Tel.: 202-514-0000
Tel.: 202-514-1323
http://www.fbi.gov/contact/legat/legat.htm
http://travel.state.gov/law/info/judicial/judicial_690.html
http://ustr.gov/Trade_Sectors/Intellectual_Property/Section_Index.html
Alexandria, VA 22313-1450
Tel.: 800-786-9199
http://www.uspto.gov/
Arlington, VA 22202
Tel.: 800-972-6382
http://www.uspto.gov
Niles Montan
President
Washington, DC 20006
Tel.: 202-223-6667
Fax: 202-223-6668
http://www.iacc.org
Saisal Daudpota
Tel.: 212-642-1739
Fax: 212-768-7796
http://www.inta.org
LM 402
Washington, DC 20559
Tel.: 202-707-6787
http://www.loc.gov/
Susan Cleary
Tel.: 310-446-1000
Fax: 310-446-1600
http://www.ifta-online.org/
Patricia L. Judd
Executive Director
Washington, DC 20001
Tel.: 202-220-4541
http://www.publishers.org
John Wolfe
Washington, DC 20036
Fax: 202-872-5501
E-mail: johnw@bsa.org
http://www.bsa.org
Chun T. Wright
Washington, DC 20004
E-mail: chun@theESA.com
Tel.: 917-522-3250
http://www.theESA.com
Steve Metalitz
Washington, DC 20006-4637
Tel.: 202-833-4198
Fax: 202-872-0546
http://www.iipa.com
Eric Garduno
Executive Director
Washington, DC 20005
Tel.: 202-544-6610
Fax: 202-478-1955
http://www.iipi.org
Washington, DC 20037
E-mail: dana@ipo.org
Tel.: 202-466-2396
Fax: 202-466-2893
http://www.ipo.org
E-mail: info@ipo.org
Mike Robinson
379
6. Is the work or mark registered with the U.S. Copyright Office or on
the principal register of the U.S. Patent and Trademark Office?
___ YES ___NO
a. If so, please provide the following:
i. Registration Date:
ii. Registration Number:
iii. Do you have a copy of the certificate of registration?
iv. Has the work or mark been the subject of a previous civil or
criminal enforcement action? If so, please provide a general
description.
b. If not, state if and when you intend to register.
7. What is the approximate retail value of the infringed work, good,
or service?
16. Please provide any information concerning the suspected crime not
described above that you believe might assist law enforcement.
Document Control
22. If the trade secret consists of documents, were they clearly marked
"CONFIDENTIAL" or "PROPRIETARY"?
___YES ___NO
23. Describe the document control procedures employed by the
company, such as limiting access and sign in/out policies.
Employee Controls
26. Are new employees subject to a background investigation?
___YES ___NO
27. Does the company hold "exit interviews" to remind departing
employees of their obligation not to disclose trade secrets?
___YES ___NO
30. Do you have any information that the theft of trade secrets were
committed to benefit a foreign government or instrumentality of a
foreign government?
___YES ___NO
If so, identify the foreign government or instrumentality and
describe that information.
32. Identify any physical locations associated with the theft of trade
secret, such as where it may be currently stored or used.
35. Please provide any information concerning the suspected crime not
described above that you believe might assist law enforcement.
No
Commercial Commercial No Commercial Commercial
Purpose1 Purpose Purpose Purpose
- 1st Offense - 2nd Offense - 1st Offense - 2nd Offense
389
No
Commercial Commercial No Commercial Commercial
Purpose1 Purpose Purpose Purpose
- 1st Offense - 2nd Offense - 1st Offense - 2nd Offense
Economic • 15 years
Espionage Act
• $500K or
(EEA)–
twice the
Trade Secret gain/loss
Theft to Benefit (individuals)
a Foreign
• $10M or
Government,
twice the
Instrumentality,
gain/loss
or Agent3
(organizations)
18 U.S.C.
• Forfeiture–
§ 1831
crim. only
• Restitution–
mandatory
Economic • 10 years
Espionage Act
• $250K or
(EECA)–
twice the
Trade Secret gain/loss
Theft for (individuals)
Commercial
• $5M or twice
Purposes
the gain/loss
18 U.S.C. (organizations)
§ 1832
• Forfeiture–
crim. only
• Restitution–
mandatory
Counterfeit/ • 5 years
Illicit Labels
• $250K or
and Counterfeit
twice the
Documentation
gain/loss
and Packaging
(individuals)
for Copyrighted
Works • $500K or
twice the
18 U.S.C.
gain/loss
§ 2318
(organizations)
• Forfeiture–
civ. & crim.
• Restitution–
mandatory
Encino, CA 91436
Tel.: 818-995-6600
Fax: 818-382-1795
Bill Shannon
Cell: 917-731-5783
http://www.mpaa.org
Jonathan Whitehead
Anti-Piracy Unit
Washington, DC 20036
Tel.: 202-857-9602
Fax: 202-775-7253
http://www.riaa.org
Jeremy Banks
IFPI Secretariat
54 Regent Street
London
W1B 5RE
United Kingdom
Tel.: 011-44-207-878-6804
E-mail: jeremy.banks@ifpi.org
http://www.ifpi.org/
Washington, DC 20005-4095
Tel.: 202-289-7442
Fax: 202-289-7097
Keith Kupferschmid
Tel.: 202-789-4442
E-mail: keithk@siia.net
Jason Allen
Tel.: 202-789-4477
E-mail: jallen@siia.net
379
6. Is the work or mark registered with the U.S. Copyright Office or on
the principal register of the U.S. Patent and Trademark Office?
___ YES ___NO
a. If so, please provide the following:
i. Registration Date:
ii. Registration Number:
iii. Do you have a copy of the certificate of registration?
iv. Has the work or mark been the subject of a previous civil or
criminal enforcement action? If so, please provide a general
description.
b. If not, state if and when you intend to register.
7. What is the approximate retail value of the infringed work, good,
or service?
16. Please provide any information concerning the suspected crime not
described above that you believe might assist law enforcement.
Document Control
22. If the trade secret consists of documents, were they clearly marked
"CONFIDENTIAL" or "PROPRIETARY"?
___YES ___NO
23. Describe the document control procedures employed by the
company, such as limiting access and sign in/out policies.
Employee Controls
26. Are new employees subject to a background investigation?
___YES ___NO
27. Does the company hold "exit interviews" to remind departing
employees of their obligation not to disclose trade secrets?
___YES ___NO
30. Do you have any information that the theft of trade secrets were
committed to benefit a foreign government or instrumentality of a
foreign government?
___YES ___NO
If so, identify the foreign government or instrumentality and
describe that information.
32. Identify any physical locations associated with the theft of trade
secret, such as where it may be currently stored or used.
35. Please provide any information concerning the suspected crime not
described above that you believe might assist law enforcement.
No
Commercial Commercial No Commercial Commercial
Purpose1 Purpose Purpose Purpose
- 1st Offense - 2nd Offense - 1st Offense - 2nd Offense
389
No
Commercial Commercial No Commercial Commercial
Purpose1 Purpose Purpose Purpose
- 1st Offense - 2nd Offense - 1st Offense - 2nd Offense
Economic • 15 years
Espionage Act
• $500K or
(EEA)–
twice the
Trade Secret gain/loss
Theft to Benefit (individuals)
a Foreign
• $10M or
Government,
twice the
Instrumentality,
gain/loss
or Agent3
(organizations)
18 U.S.C.
• Forfeiture–
§ 1831
crim. only
• Restitution–
mandatory
Economic • 10 years
Espionage Act
• $250K or
(EECA)–
twice the
Trade Secret gain/loss
Theft for (individuals)
Commercial
• $5M or twice
Purposes
the gain/loss
18 U.S.C. (organizations)
§ 1832
• Forfeiture–
crim. only
• Restitution–
mandatory
Counterfeit/ • 5 years
Illicit Labels
• $250K or
and Counterfeit
twice the
Documentation
gain/loss
and Packaging
(individuals)
for Copyrighted
Works • $500K or
twice the
18 U.S.C.
gain/loss
§ 2318
(organizations)
• Forfeiture–
civ. & crim.
• Restitution–
mandatory
395
in some manner in order to avoid any interference. Neither the agent
nor attorney should advise the investigator what types of evidence are
desired for the Department's investigation.
2. Scenario: A nationwide retail giant has its own security force and has
spent considerable resources to set up its own forensics laboratory to
fight shoplifting and other crimes against the company. The local FBI
office is investigating a matter that has no connection to the retail
company. The FBI office, however, believes that the equipment at the
retail company's laboratory is superior to the Department's
capabilities for enhancing photographs for identification. The FBI
office solicits the retail giant for help, and the business readily agrees
to provide forensic assistance without charge. The enhanced
photograph allows the FBI to continue its investigation with greater
efficiency.
Analysis: Initially, the FBI must obtain prior approval from the
Deputy Attorney General or the Attorney General before any
representative may contact the retail company to seek its services.
The free forensic services constitute a gift. Since the value of these
services is less than $50,000, the agent and attorney must seek the
component head's approval in order to accept these services for free.
In considering this offer, the component head must consider why the
Department is seeking outside forensics aid. The Department may
need a third party's gift because the Department does not own or have
at its disposal the same equipment. In addition, the time-sensitive
nature of the case might require immediate action, and the
Department might not gain access to such equipment with the same
speed as that offered as a gift. In this situation, with advance approval
of the solicitation the Department may accept the gift.
3. Scenario: Consider the same facts set forth in Scenario #2, but
assume that the retail giant informed the local FBI office that it had
a forensics laboratory with equipment capable of performing a variety
of functions, and that it was offering general access to its equipment
and staff for investigative purposes any time that the Department
determined the company's resources would benefit the Department.
Analysis: A retail giant's standing offer to allow the Department to use
its forensic facilities, whether for case-specific matters or general
investigative purposes, should be considered carefully. (Initially, this
company's offer does not trigger the same considerations set forth in
Scenario #2, where the Department solicited the gift.). As noted
above, there may be instances when private industry has forensic
resources that are not available to the Department, and the
401
VIII.E.3. Choosing a Forfeiture VI.E.5.a. Retail Value of Copyrighted
Procedure Goods vs. Counterfeit Labels,
VIII.E.4.b. Infringing Items, Other Documentation, and Packaging
Contraband, and Facilitating VIII.E.5.b. Infringing Items, Other
Property Contraband, and Facilitating
see also FORFEITURE Property
ADVICE OF COUNSEL DEFENSE AIDING OR ABETTING
IV.C.4. Advice of Counsel II.C.4.d. Special Rules for Rental,
IV.C.5. Claim of Right—Public Lease, and Lending
Domain and Proprietary Rights II.E.2. Sentencing Guidelines
see also IGNORANCE OF THE LAW III.B.3.b.i. General Definition
III.B.3.c. Goods and Services [after
AFFIRMATIVE DEFENSES
March 16, 2006: and Labels,
II.B. Elements
Patches, Stickers, Wrappers,
II.C.4.b. Affirmative Defense or Part of
Badges, Emblems, Medallions,
the Government's Case-in-Chief?
Charms, Boxes, Containers, Cans,
III.C.4. Lanham Act Defenses
Cases, Hangtags, Documentation,
III.C.5. Statute of Limitations
or Packaging of Any Type or
V.C.10.d. Fair Use
Nature]
AFFIXED III.B.4.e. Use of the Counterfeit Mark
III.B.4.a. Definition of Counterfeit "On or In Connection With"
Mark Generally: Not Genuine or Goods or Services
Authentic III.B.4.f. The Counterfeit Mark Must
III.B.4.b. The Counterfeit Mark Must Have Been Used for the Same
Be Identical to or Type of Goods or Services for
Indistinguishable from a Genuine Which the Genuine Mark Was
Mark Owned by Another Registered
VI.B. Elements III.E.5. Sentencing Guidelines
VI.B.1. The Defendant Acted III.F. Other Charges to Consider
"Knowingly" VI.D.1. Electronic Copies of Labels,
VI.B.2. The Defendant Trafficked Documentation, or Packaging
VI.B.3. Trafficking in Labels Affixed to, VI.F. Other Criminal Charges to
Enclosing, or Accompanying (or Consider
Designed to be Affixed to, VIII.C.1.e. Manufacturing, Importing,
Enclose, or Accompany) a or Uploading Infringing Items
Phonorecord, Computer Program, Increases the Offense Level by 2—
Motion Picture or other U.S.S.G. § 2B5.3(b)(3) [Before
Audiovisual Work, Literary, October 24, 2005: § 2B5.3(b)(2)]
Pictorial, Graphic, or Sculptural VIII.E.5.b. Infringing Items, Other
Work, or Work of Visual Art, or Contraband, and Facilitating
Documentation or Packaging for Property
Such Works (i.e., Trafficked
ARCHIVAL EXCEPTION
Either in Documentation or
II.A.6. The Rights Protected by
Packaging for Such Works Itself,
Copyright
or in Labels for Such
II.C.4.a. Operation of the Doctrine
Documentation or Packaging)
II.C.6. "Archival Exception" for
VI.B.4. The Labels, Documentation, or
Computer Software—17 U.S.C.
Packaging Materials are
§ 117
Counterfeit or Illicit
VI.B.5. Federal Jurisdiction ATTORNEYS' FEES
VI.E.4. Forfeiture II.A.5. When Copyright Protection
Begins and Ends
Index 403
VIII.D.1. Restitution is Available—and IX.B.1. Federal Law Enforcement
Often Required—in Intellectual Priorities
Property Prosecutions
CIRCUMVENTION
VIII.D.2. Victims Include Owners of
IV.C.6. The First Amendment
Intellectual Property and
V.A.1. DMCA's Background and
Consumers Who Were Defrauded
Purpose
CAMCORDING V.A.2. Key Concepts: Access Controls
II.E.2. Sentencing Guidelines vs. Copy Controls, Circumvention
II.F. Other Charges to Consider vs. Trafficking
VIII.E.2.c. Table of Forfeiture V.A.2.b. Circumvention vs. Trafficking
Provisions Arranged by Criminal in Circumvention Tools
IP Statute V.A.3. Differences Between the DMCA
VIII.E.5. Criminal Forfeiture in IP and Traditional Copyright Law
Matters V.A.4. Other DMCA Sections That Do
VIII.E.5.b. Infringing Items, Other Not Concern Prosecutors
Contraband, and Facilitating V.B. Elements of Anti-Circumvention
Property and Anti-Trafficking Provisions
V.B.1. Circumventing Access Controls,
CASH
17 U.S.C. §§ 1201(a)(1) and
II.B.2.a. Legal Standard
1204
X.C.1.a. Applicable Law
V.B.1.a. Circumvented
X.C.1.b.iii. Cash
V.B.1.b. Technological Measures That
X.C.1.c.iii. Acceptance of Gifts
Effectively Control Access (an
CERTIFICATION MARKS "Access Control")
II.E.2. Sentencing Guidelines V.B.1.c. To a Copyrighted Work
III. Trafficking In Counterfeit V.B.1.d. How Congress Intended the
Trademarks, Service Marks, and Anti-Circumvention Prohibition
Certification Marks—18 U.S.C. to Apply
§ 2320 V.B.1.e. Regulatory Exemptions to
III.A.1. Overview of the Chapter Liability under § 1201(a)(1)
III.A.2. Why Criminal Law Protects V.B.2. Trafficking in Access Control
Trademarks, Service Marks, and Circumvention Tools and
Certification Marks Services—17 U.S.C.
III.F. Other Charges to Consider §§ 1201(a)(2) and 1204
VIII.D.1. Restitution is Available—and V.B.2.a. Trafficking
Often Required—in Intellectual V.B.2.b. In a Technology, Product,
Property Prosecutions Service, or Part Thereof
VIII.E. Forfeiture V.B.2.c. Purpose or Marketing of
VIII.E.1. Property Subject to Forfeiture Circumvention Technology
VIII.E.4.b. Infringing Items, Other V.B.2.c.1. Primarily Designed or
Contraband, and Facilitating Produced
Property V.B.2.c.2. Limited Commercially
Significant Purpose Other Than
CHILDREN
Circumvention
II.B.3.b.i. Generally
V.B.2.c.3. Knowingly Marketed for
III.A.2. Why Criminal Law Protects
Circumvention
Trademarks, Service Marks, and
V.B.3. Trafficking in Tools, Devices,
Certification Marks
and Services to Circumvent Copy
V.C.6. Encryption Research
Controls—17 U.S.C.
VIII.C.1.c.iii. Retail Value
§§ 1201(b)(1) and 1204
CHIP UNITS V.B.3.a. Circumventing
I.C. Why Criminal Enforcement? V.B.3.b. Technological Measure That
Effectively Protects a Right of a
Index 405
II.E.2. Sentencing Guidelines U.S.S.G. § 2B5.3(b)(3) [Before
III.B.3.b.i. General Definition October 24, 2005: § 2B5.3(b)(2)]
III.B.3.c. Goods and Services [after VIII.C.2.a. Applicable Guideline is
March 16, 2006: and Labels, § 2B1.1, Except for Attempts and
Patches, Stickers, Wrappers, Conspiracies
Badges, Emblems, Medallions, VIII.C.2.c.iii. Methods of Calculating
Charms, Boxes, Containers, Cans, Loss
Cases, Hangtags, Documentation, VIII.D.2. Victims Include Owners of
or Packaging of Any Type or Intellectual Property and
Nature] Consumers Who Were Defrauded
III.B.4.d. The Genuine Mark Must
CONTRABAND
Have Been in Use by the
III.B.3.b.iii. Making and Obtaining
Mark-Holder or Its Licensee
Counterfeits vs. Possession with
III.B.4.e. Use of the Counterfeit Mark
Intent to Traffic
"On or In Connection With"
VI.B.2. The Defendant Trafficked
Goods or Services
VIII.E.1. Property Subject to Forfeiture
III.B.4.f. The Counterfeit Mark Must
VIII.E.2.c. Table of Forfeiture
Have Been Used for the Same
Provisions Arranged by Criminal
Type of Goods or Services for
IP Statute
Which the Genuine Mark Was
VIII.E.4.b. Infringing Items, Other
Registered
Contraband, and Facilitating
III.B.6. Venue
Property
III.D.7. Units of Prosecution
VIII.E.5.b. Infringing Items, Other
III.E.5. Sentencing Guidelines
Contraband, and Facilitating
III.F. Other Charges to Consider
Property
IV.B.1. Overview
IV.B.3. Elements Common to 18 COOKIE FILES
U.S.C. §§ 1831, 1832 V.C.6. Encryption Research
IV.B.3.a.i. Generally
COPY CONTROLS
IV.B.3.a.ii. Employee's General
IV.B.3.a.vi. Disclosure's Effects
Knowledge, Skill, or Abilities Not
IV.C.6. The First Amendment
Covered
V.A.2. Key Concepts: Access Controls
IV.B.3.a.vi. Disclosure's Effects
vs. Copy Controls, Circumvention
IV.B.3.b.v. Mere Risk of
vs. Trafficking
Misappropriation Not
V.A.2.a. Access Controls vs. Copy/Use
Prosecutable, but Attempts and
Controls
Conspiracies Are
V.A.2.b. Circumvention vs. Trafficking
IV.B.6. Attempts and Conspiracies,
in Circumvention Tools
Including the Impossibility
V.A.3. Differences Between the DMCA
Defense
and Traditional Copyright Law
IV.C.6. The First Amendment
V.B.1. Circumventing Access Controls,
VI.D.1. Electronic Copies of Labels,
17 U.S.C. §§ 1201(a)(1) and
Documentation, or Packaging
1204
VI.E.5.a. Retail Value of Copyrighted
V.B.3. Trafficking in Tools, Devices,
Goods vs. Counterfeit Labels,
and Services to Circumvent Copy
Documentation, and Packaging
Controls—17 U.S.C.
VI.F. Other Criminal Charges to
§§ 1201(b)(1) and 1204
Consider
V.B.3.a. Circumventing
VIII.C.1.c.ii. Number of Infringing
V.B.3.b. Technological Measure That
Items
Effectively Protects a Right of a
VIII.C.1.e. Manufacturing, Importing,
Copyright Owner Under This
or Uploading Infringing Items
Title ("Copy Control")
Increases the Offense Level by 2—
Index 407
Enclose, or Accompany) a § 2B5.3(b)(4) [before October 24,
Phonorecord, Computer Program, 2005: § 2B5.3(b)(3)]
Motion Picture or other VIII.C.1.i. Upward Adjustment for
Audiovisual Work, Literary, Harm to Copyright or
Pictorial, Graphic, or Sculptural Mark-Owner's Reputation,
Work, or Work of Visual Art, or Connection with Organized
Documentation or Packaging for Crime, or Other Unspecified
Such Works (i.e., Trafficked Grounds
Either in Documentation or VIII.D.1. Restitution is Available—and
Packaging for Such Works Itself, Often Required—in Intellectual
or in Labels for Such Property Prosecutions
Documentation or Packaging) VIII.D.2. Victims Include Owners of
VI.B.4. The Labels, Documentation, or Intellectual Property and
Packaging Materials are Consumers Who Were Defrauded
Counterfeit or Illicit VIII.D.3. Determining a Restitution
VI.B.5. Federal Jurisdiction Figure
VI.D.2. Advantages of Charging a VIII.E.1. Property Subject to Forfeiture
§ 2318 Offense VIII.E.2.a. Administrative Forfeiture
VI.E.5.a. Retail Value of Copyrighted Proceedings
Goods vs. Counterfeit Labels, VIII.E.2.c. Table of Forfeiture
Documentation, and Packaging Provisions Arranged by Criminal
VI.E.5.b. Number of Infringing IP Statute
Copyrighted Goods vs. Number of VIII.E.4. Civil Forfeiture in IP Matters
Labels, Documents, or Packaging VIII.E.4.a. Proceeds
Items VIII.E.4.b. Infringing Items, Other
VI.F. Other Criminal Charges to Contraband, and Facilitating
Consider Property
VII.A. Overview of Patent VIII.E.4.c.ii. Victims' Ability to Forfeit
VIII.C.1. Offenses Involving Copyright Property
(Including Bootleg Music, VIII.E.5. Criminal Forfeiture in IP
Camcorded Movies, and the Matters
Unauthorized Use of Satellite, VIII.E.5.b. Infringing Items, Other
Radio, and Cable Contraband, and Facilitating
Communications), Trademark, Property
Counterfeit Labeling, and the IX.C. Whether the Person is Subject to
DMCA Prosecution in Another
VIII.C.1.a. Applicable Guideline is Jurisdiction
§ 2B5.3 IX.D. The Adequacy of Alternative
VIII.C.1.c.ii. Number of Infringing Non-Criminal Remedies
Items X. Victims of Intellectual Property
VIII.C.1.c.iii. Retail Value Crimes—Ethics and Obligations
VIII.C.1.c.v. Cross-Reference to Loss X.B.3.a. Private Civil Remedies
Table in U.S.S.G. § 2B1.1 X.C.1.b.i. Assistance from Victims and
VIII.C.1.e. Manufacturing, Importing, Related Parties
or Uploading Infringing Items X.C.1.b.iv. Storage Costs in
Increases the Offense Level by 2— Counterfeit or Infringing Products
U.S.S.G. § 2B5.3(b)(3) [Before Cases
October 24, 2005: § 2B5.3(b)(2)]
COPYRIGHT ACT OF 1976
VIII.C.1.f. Offenses Not Committed
II.A.4. Federal Preemption
for Commercial Advantage or
II.C.1. Statute of Limitations: 5 years
Private Financial Gain Reduces
the Offense Level by 2—U.S.S.G.
Index 409
VIII.C.1.c.iii. Retail Value IV.B.3.a.i. Generally
VIII.C.1.e. Manufacturing, Importing, IV.B.3.a.viii. Independent Economic
or Uploading Infringing Items Value
Increases the Offense Level by 2—
DE MINIMIS NON CURAT LEX
U.S.S.G. § 2B5.3(b)(3) [Before
IX.B.2. The Nature and Seriousness of
October 24, 2005: § 2B5.3(b)(2)]
the Offense
VIII.E.4.a. Proceeds
VIII.E.5.b. Infringing Items, Other DECALS
Contraband, and Facilitating VI.D.1. Electronic Copies of Labels,
Property Documentation, or Packaging
X.B.3.a. Private Civil Remedies
DECRYPTION
COUNTERFEIT MARKS V.B.1.a. Circumvented
see generally Chapter III V.B.1.b. Technological Measures That
see also Effectively Control Access (an
I.B. What Is Intellectual Property? "Access Control")
II.B.3.b.ii. Definition of "Retail Value" V.B.1.d. How Congress Intended the
in this Context Anti-Circumvention Prohibition
VI.A. Distinguished From Trademark to Apply
and Copyright Statutes V.C.5. Reverse Engineering and
VI.B.2. The Defendant Trafficked Interoperability of Computer
VIII.C.1.c.ii. Number of Infringing Programs
Items V.C.10.b.ii. "As Applied" First
VIII.D.1. Restitution is Available—and Amendment Challenges to the
Often Required—in Intellectual DMCA
Property Prosecutions VIII.C.1.h. Decryption or
VIII.D.3. Determining a Restitution Circumvention of Access Controls
Figure Increases the Offense Level—
VIII.E.2.c. Table of Forfeiture U.S.S.G. § 3B1.3
Provisions Arranged by Criminal VIII.D.1. Restitution is Available—and
IP Statute Often Required—in Intellectual
VIII.E.4. Civil Forfeiture in IP Matters Property Prosecutions
VIII.E.4.b. Infringing Items, Other VIII.D.2. Victims Include Owners of
Contraband, and Facilitating Intellectual Property and
Property Consumers Who Were Defrauded
VIII.E.5. Criminal Forfeiture in IP see also ENCRYPTION
Matters
DEEP LINKS
VIII.E.5.a. Proceeds
V.B.2.a. Trafficking
VIII.E.5.b. Infringing Items, Other
Contraband, and Facilitating DELIBERATE IGNORANCE
Property III.B.5. The Defendant Used the
X.B.3.a. Private Civil Remedies Counterfeit Mark "Knowingly"
VI.B.1. The Defendant Acted
COUNTERFEIT
"Knowingly"
PHARMACEUTICALS
VIII.C.1.j. Vulnerable Victims— DEPOSITIONS
U.S.S.G. § 3A1.1(b) IV.B.3.a.iii. Specification of Trade
Secrets
COUNTERFEIT TRADEMARKS
IV.D.2. Confidentiality and the Use of
see TRADEMARKS
Protective Orders
CRIMINAL FORFEITURE VIII.E.3. Choosing a Forfeiture
see FORFEITURE Procedure
CUSTOMER LISTS DERIVATIVE WORKS
IV.A. Introduction I.B. What Is Intellectual Property?
Index 411
IV.B.6. Attempts and Conspiracies, V.B.3.a. Circumventing
Including the Impossibility V.C.6. Encryption Research
Defense V.C.10.b.ii. "As Applied" First
IV.E.1.a. Imprisonment and Fines Amendment Challenges to the
VIII.C. Sentencing Guidelines DMCA
VIII.C.1.a. Applicable Guideline is VIII.C.1.a. Applicable Guideline is
§ 2B5.3 § 2B5.3
VIII.C.2. Offenses Involving the see also DECRYPTION
Economic Espionage Act
EPHEMERAL REPRODUCTIONS
VIII.D.1. Restitution is Available—and
V.A.4. Other DMCA Sections That Do
Often Required—in Intellectual
Not Concern Prosecutors
Property Prosecutions
VIII.E.2.c. Table of Forfeiture ETHICS
Provisions Arranged by Criminal X. Victims of Intellectual Property
IP Statute Crimes— Ethics and Obligations
VIII.E.4. Civil Forfeiture in IP Matters X.B.2. Ethical Concerns When the
VIII.E.5.a. Proceeds Criminal Prosecution Results in
VIII.E.5.b. Infringing Items, Other an Advantage in a Civil Matter
Contraband, and Facilitating X.B.2.a. Victims Who Seek Advantage
Property By Threats of Criminal
Prosecution
ECONOMIC ESPIONAGE
X.B.2.b. Global Settlement
SPONSORED BY A FOREIGN
Negotiations
GOVERNMENT
X.C.1.a. Applicable Law
IV.E.1.a. Imprisonment and Fines
X.C.1.b.iii. Cash
ELECTRONIC TRANSMISSION OF X.C.1.b.iv. Storage Costs in
A GENUINE CERTIFICATE Counterfeit or Infringing Products
VI.D.1. Electronic Copies of Labels, Cases
Documentation, or Packaging X.C.1.c.i. Consultative Process for
Acceptance of Assistance and Gifts
EMOTIONAL HARM
X.C.1.c.iii. Acceptance of Gifts
VIII.C.2.f. Upward Departure
X.C.3. Strategic and Case-Related
Considerations—U.S.S.G. § 2B1.1
Issues
cmt. n.19(A)
X.C.4. Help and Advice
EMULATORS
EXPERT WITNESSES
V.C.5. Reverse Engineering and
IV.B.3.a.iii. Specification of Trade
Interoperability of Computer
Secrets
Programs
IV.D.2. Confidentiality and the Use of
ENCRYPTION Protective Orders
IV.A. Introduction X.C. Offers of Assistance From Victims
IV.B.3.a.vii. Reasonable Measures to and Related Parties
Maintain Secrecy X.C.1.b.vi. Assistance from Private
V.A.2.a. Access Controls vs. Copy/Use Third Parties
Controls
EXTRADITION
V.B.1.a. Circumvented
IX.B.5. The Individual's Willingness to
V.B.1.b. Technological Measures That
Cooperate in the Investigation or
Effectively Control Access (an
Prosecution of Others
"Access Control")
V.B.1.d. How Congress Intended the EXTRATERRITORIALITY
Anti-Circumvention Prohibition II.C.2. Jurisdiction
to Apply IV.B.1. Overview
V.B.2.c.1. Primarily Designed or IV.D.3. Extraterritoriality
Produced
Index 413
V.C.10.b.i. Facial Challenges FOOD
VIII.C.1.a. Applicable Guideline is see MISBRANDED FOOD, DRUGS,
§ 2B5.3 AND COSMETICS
VIII.C.1.f. Offenses Not Committed
FOOD AND DRUG
for Commercial Advantage or
ADMINISTRATION (FDA)
Private Financial Gain Reduces
III.F. Other Charges to Consider
the Offense Level by 2—U.S.S.G.
§ 2B5.3(b)(4) [before October 24, FOREIGN AGENTS
2005: § 2B5.3(b)(3)] IV.B.1. Overview
IV.B.4. Additional 18 U.S.C. § 1831
FIRST AMENDMENT
Element: Intent to Benefit a
II.C.5. Fair Use
Foreign Government, Foreign
IV.C.6. The First Amendment
Instrumentality, or Foreign Agent
V.B.2.c.3. Knowingly Marketed for
VIII.C.2.d. Intent to Benefit a Foreign
Circumvention
Government, Instrumentality, or
V.C.10.b. The First Amendment
Agent—U.S.S.G. § 2B1.1(b)(5)
V.C.10.b.i. Facial Challenges
V.C.10.b.ii. "As Applied" First FOREIGN COMMERCE
Amendment Challenges to the see INTERSTATE AND FOREIGN
DMCA COMMERCE
V.C.10.d. Fair Use
FOREIGN ECONOMIC ESPIONAGE
FIRST SALE DOCTRINE see ECONOMIC ESPIONAGE
II.A.2. Legal Basis for Copyright and
FOREIGN GOVERNMENTS
Related Laws
I.B. What Is Intellectual Property?
II.B. Elements
IV.B.1. Overview
II.B.3. Infringement of the Copyright
IV.B.4. Additional 18 U.S.C. § 1831
II.B.3.a.ii. Distribution
Element: Intent to Benefit a
II.C.4. The First Sale Doctrine—17
Foreign Government, Foreign
U.S.C. § 109
Instrumentality, or Foreign Agent
II.C.4.a. Operation of the Doctrine
IV.E.1.a. Imprisonment and Fines
II.C.4.b. Affirmative Defense or Part of
VIII.C.2.d. Intent to Benefit a Foreign
the Government's Case-in-Chief?
Government, Instrumentality, or
II.C.4.c. Disproving First Sale at Trial
Agent—U.S.S.G. § 2B1.1(b)(5)
II.C.4.d. Special Rules for Rental,
VIII.D.1. Restitution is Available—and
Lease, and Lending
Often Required—in Intellectual
II.C.6. "Archival Exception" for
Property Prosecutions
Computer Software—17 U.S.C.
§ 117 FOREIGN INSTRUMENTALITY
IV.B.1. Overview
FIXED IN ANY TANGIBLE
IV.B.4. Additional 18 U.S.C. § 1831
MEDIUM OF EXPRESSION
Element: Intent to Benefit a
see TANGIBLE MEDIUM
Foreign Government, Foreign
FONT EMBEDDING BITS Instrumentality, or Foreign Agent
V.B.1.b. Technological Measures That VIII.C.2.d. Intent to Benefit a Foreign
Effectively Control Access (an Government, Instrumentality, or
"Access Control") Agent—U.S.S.G. § 2B1.1(b)(5)
V.B.3.b. Technological Measure That
FOREIGN LAW ENFORCEMENT
Effectively Protects a Right of a
AGENCIES
Copyright Owner Under This
IX.B.5. The Individual's Willingness to
Title ("Copy Control")
Cooperate in the Investigation or
Prosecution of Others
Index 415
III.C.4. Lanham Act Defenses IGNORANCE OF THE LAW
IV.C.4. Advice of Counsel II.B.2.a. Legal Standard
IV.C.5. Claim of Right— Public IV.B.3.c. Knowledge
Domain and Proprietary Rights
ILLICIT LABELS
V.C.6. Encryption Research
see generally Chapter VI
V.C.9. Security Testing
see also
VII.C. False Marking of Patent— 35
II.B.3.b.ii. Definition of "Retail Value"
U.S.C. § 292
in this Context
GOODS AND SERVICES II.C.4.a. Operation of the Doctrine
II.E.2. Sentencing Guidelines II.E.2. Sentencing Guidelines
III.A.1. Overview of the Chapter III.F. Other Charges to Consider
III.A.2. Why Criminal Law Protects VIII.C.1.a. Applicable Guideline is
Trademarks, Service Marks, and § 2B5.3
Certification Marks VIII.C.1.c.ii. Number of Infringing
III.B.1. The Trademark Counterfeiting Items
Crime in General VIII.D.1. Restitution is Available—and
III.B.3.b.i. General Definition Often Required—in Intellectual
III.B.3.c. Goods and Services [after Property Prosecutions
March 16, 2006: and Labels, VIII.E.2.c. Table of Forfeiture
Patches, Stickers, Wrappers, Provisions Arranged by Criminal
Badges, Emblems, Medallions, IP Statute
Charms, Boxes, Containers, Cans, VIII.E.4. Civil Forfeiture in IP Matters
Cases, Hangtags, Documentation, VIII.E.4.c.ii. Victims' Ability to Forfeit
or Packaging of Any Type or Property
Nature] VIII.E.5. Criminal Forfeiture in IP
III.B.4.e. Use of the Counterfeit Mark Matters
"On or In Connection With" VIII.E.5.b. Infringing Items, Other
Goods or Services Contraband, and Facilitating
III.B.4.f. The Counterfeit Mark Must Property
Have Been Used for the Same X.B.3.a. Private Civil Remedies
Type of Goods or Services for
IN PERSONAM
Which the Genuine Mark Was
VIII.E.2.b. Civil and Criminal
Registered
Proceedings
III.C.1. Authorized-Use Defense:
VIII.E.5. Criminal Forfeiture in IP
Overrun Goods
Matters
III.D.5. Mark-Holder's Failure to Use—
Symbol IN REM
III.D.7. Units of Prosecution VIII.E.2.b. Civil and Criminal
VI.B.2. The Defendant Trafficked Proceedings
VIII.C.1.a. Applicable Guideline is VIII.E.4.b. Infringing Items, Other
§ 2B5.3 Contraband, and Facilitating
IX.B.2. The Nature and Seriousness of Property
the Offense VIII.E.5. Criminal Forfeiture in IP
Matters
GOVERNMENT TRADE SECRETS
IV.F. Other Possible Charges IN USE
III.B.1. The Trademark Counterfeiting
GRAY MARKET GOODS
Crime in General
III.C.2. Authorized-Use Defense—
III.B.4.a. Definition of Counterfeit
Gray Market Goods
Mark Generally: Not Genuine or
HOME PAGES Authentic
V.B.2.a. Trafficking
Index 417
INTEROPERABILITY DEFENSE VII.D. No Prosecution for Interstate
V.C.5. Reverse Engineering and Transportation or Receipt of
Interoperability of Computer Stolen Property—18 U.S.C.
Programs §§ 2314, 2315
VIII.C.2.c.iii. Methods of Calculating
INTERSTATE AND FOREIGN
Loss
COMMERCE
II.A.2. Legal Basis for Copyright and JUDICIAL NOTICE
Related Laws II.B.1.e. Proof of Copyright at Trial
II.E.2. Sentencing Guidelines III.B.4.c. The Genuine Mark Must Be
III.B.4.b. The Counterfeit Mark Must Federally Registered on the U.S.
Be Identical to or Patent and Trademark Office's
Indistinguishable from a Genuine Principal Register
Mark Owned by Another
JURY INSTRUCTIONS
III.B.4.d. The Genuine Mark Must
see APPENDICES B-F
Have Been in Use by the
Mark-Holder or Its Licensee JUSTICE FOR ALL ACT OF 2004
III.B.4.g. Likelihood of Confusion, X.A. Victims' Rights
Mistake, or Deception
KNOWINGLY
IV.B.1. Overview
II.B.2.a. Legal Standard
IV.B.5.c. Product Produced for or
II.E.2. Sentencing Guidelines
Placed in Interstate or Foreign
III.B.1. The Trademark Counterfeiting
Commerce
Crime in General
IV.C.6. The First Amendment
III.B.3.c. Goods and Services [after
IV.F. Other Possible Charges
March 16, 2006: and Labels,
V.C.10. Constitutionality of the
Patches, Stickers, Wrappers,
DMCA
Badges, Emblems, Medallions,
V.C.10.a. Congress's Constitutional
Charms, Boxes, Containers, Cans,
Authority to Enact § 1201 of the
Cases, Hangtags, Documentation,
DMCA
or Packaging of Any Type or
VI.B. Elements
Nature]
VI.B.5. Federal Jurisdiction
III.B.4. The Defendant Used a
VI.B.6. Venue
"Counterfeit Mark" On or In
VI.F. Other Criminal Charges to
Connection With Those Goods or
Consider
Services [after March 16, 2006: or
VIII.C.1.e. Manufacturing, Importing,
a Counterfeit Mark Was Applied
or Uploading Infringing Items
to Labels, Documentation, or
Increases the Offense Level by 2—
Packaging for Those Goods or
U.S.S.G. § 2B5.3(b)(3) [Before
Services]
October 24, 2005: § 2B5.3(b)(2)]
III.B.5. The Defendant Used the
VIII.D.1. Restitution is Available—and
Counterfeit Mark "Knowingly"
Often Required—in Intellectual
III.D.7. Units of Prosecution
Property Prosecutions
IV.B.1. Overview
VIII.E. Forfeiture
IV.B.3.c. Knowledge
X.C.1.b.iv. Storage Costs in
IV.B.5.c. Product Produced for or
Counterfeit or Infringing Products
Placed in Interstate or Foreign
Cases
Commerce
INTERSTATE TRANSPORTATION IV.C.6. The First Amendment
AND RECEIPT OF STOLEN IV.F. Other Possible Charges
PROPERTY OR GOODS V.B.2.c. Purpose or Marketing of
II.E.2. Sentencing Guidelines Circumvention Technology
IV.A. Introduction V.B.2.c.3. Knowingly Marketed for
IV.F. Other Possible Charges Circumvention
Index 419
Indistinguishable from a Genuine Patent and Trademark Office's
Mark Owned by Another Principal Register
III.B.4.g. Likelihood of Confusion, III.F. Other Charges to Consider
Mistake, or Deception IV.F. Other Possible Charges
VI.F. Other Criminal Charges to
LIMITED FEDERAL RESOURCES
Consider
IX.B.2. The Nature and Seriousness of
VIII.C.1.k. No Downward Departure
the Offense
for the Victim's Participation in
LIMITED TIMES Prosecution
II.A.1. What Copyright Law Protects VIII.D.1. Restitution is Available—and
II.A.2. Legal Basis for Copyright and Often Required—in Intellectual
Related Laws Property Prosecutions
II.C.4.c. Disproving First Sale at Trial VIII.D.2. Victims Include Owners of
II.E.2. Sentencing Guidelines Intellectual Property and
V.C.10.a. Congress's Constitutional Consumers Who Were Defrauded
Authority to Enact § 1201 of the
MAKING AVAILABLE
DMCA
II.B. Elements
VII.A. Overview of Patent
II.B.3.a.ii. Distribution
LINUX II.B.3.c.i. Distribution
V.B.2.c.1. Primarily Designed or
MANDAMUS
Produced
IV.D.2. Confidentiality and the Use of
V.C.5. Reverse Engineering and
Protective Orders
Interoperability of Computer
X.A. Victims' Rights
Programs
MANDATORY RESTITUTION
LIVE MUSICAL PERFORMANCES
III.E.3. Restitution
II.E.2. Sentencing Guidelines
IV.E.1.b. Criminal Forfeiture
III.F. Other Charges to Consider
VI.E.3. Restitution
VI.B.4. The Labels, Documentation, or
VIII.D.1. Restitution is Available—and
Packaging Materials are
Often Required—in Intellectual
Counterfeit or Illicit
Property Prosecutions
VI.F. Other Criminal Charges to
VIII.D.2. Victims Include Owners of
Consider
Intellectual Property and
VIII.C.1.a. Applicable Guideline is
Consumers Who Were Defrauded
§ 2B5.3
VIII.D.3. Determining a Restitution
VIII.E.1. Property Subject to Forfeiture
Figure
VIII.E.2.c. Table of Forfeiture
see also RESTITUTION
Provisions Arranged by Criminal
IP Statute MANDATORY VICTIMS
VIII.E.4. Civil Forfeiture in IP Matters RESTITUTION ACT OF 1996
VIII.E.4.b. Infringing Items, Other (MVRA)
Contraband, and Facilitating IV.E.1.b. Criminal Forfeiture
Property VI.E.3. Restitution
VIII.E.5. Criminal Forfeiture in IP VIII.D.1. Restitution is Available—and
Matters Often Required—in Intellectual
VIII.E.5.b. Infringing Items, Other Property Prosecutions
Contraband, and Facilitating VI.E.3. Restitution
Property see also RESTITUTION
X.B.3.a. Private Civil Remedies
MARKET STRATEGIES
MAIL AND WIRE FRAUD I.B. What Is Intellectual Property?
II.E.2. Sentencing Guidelines
MINIMAL NOVELTY
III.B.4.c. The Genuine Mark Must Be
IV.B.3.a.iv. Novelty
Federally Registered on the U.S.
Index 421
II.B.1.c. New Procedure for Camcorded Movies, and the
"Preregistration" Unauthorized Use of Satellite,
II.B.1.d.ii. Unpublished or Pre-Release Radio, and Cable
Works Communications), Trademark,
II.B.3.a. Infringement by Reproduction Counterfeit Labeling, and the
or Distribution DMCA
II.B.3.a.i. Reproduction VIII.C.1.a. Applicable Guideline is
II.B.3.a.ii. Distribution § 2B5.3
II.B.3.b.ii. Definition of "Retail Value" VIII.C.1.c.iii. Retail Value
in this Context VIII.C.1.c.v. Cross-Reference to Loss
II.B.3.c.iii. Work Being Prepared for Table in U.S.S.G. § 2B1.1
Commercial Distribution VIII.C.1.e. Manufacturing, Importing,
II.C.4.a. Operation of the Doctrine or Uploading Infringing Items
II.C.4.c. Disproving First Sale at Trial Increases the Offense Level by 2—
II.E.2. Sentencing Guidelines U.S.S.G. § 2B5.3(b)(3) [Before
III.F. Other Charges to Consider October 24, 2005: § 2B5.3(b)(2)]
V.A.2.a. Access Controls vs. Copy/Use VIII.D.1. Restitution is Available— and
Controls Often Required— in Intellectual
V.B.1.a. Circumvented Property Prosecutions
V.B.1.b. Technological Measures That VIII.E.5. Criminal Forfeiture in IP
Effectively Control Access (an Matters§ VIII.E.2.c. Table of Forfeiture
"Access Control") Provisions Arranged by Criminal
V.B.1.d. How Congress Intended the IP Statute
Anti-Circumvention Prohibition VIII.E.5.b. Infringing Items, Other
to Apply Contraband, and Facilitating
V.B.2.c.1. Primarily Designed or Property
Produced
MULTIPLE CRIME VICTIMS
V.C.5. Reverse Engineering and
X.A. Victims' Rights
Interoperability of Computer
Programs NO ELECTRONIC THEFT (NET)
VI.A. Distinguished From Trademark ACT
and Copyright Statutes II.B. Elements
VI.B. Elements II.B.2.a. Legal Standard
VI.B.3.Trafficking in Labels Affixed to, II.B.4.a. History
Enclosing, or Accompanying (or II.B.4.b. Legal Standard
Designed to be Affixed to, II.C.1. Statute of Limitations: 5 years
Enclose, or Accompany) a
NONPROFIT USE
Phonorecord, Computer Program,
II.C.4.d. Special Rules for Rental,
Motion Picture or other
Lease, and Lending
Audiovisual Work, Literary,
II.C.5. Fair Use
Pictorial, Graphic, or Sculptural
II.C.5.b. Fair Use in Criminal Cases
Work, or Work of Visual Art, or
V.A.2. Key Concepts: Access Controls
Documentation or Packaging for
vs. Copy Controls, Circumvention
Such Works (i.e., Trafficked
vs. Trafficking
Either in Documentation or
V.C.3. Certain Nonprofit Entities
Packaging for Such Works Itself,
or in Labels for Such NUMBER OF INFRINGING ITEMS
Documentation or Packaging) VI.E.5. Sentencing Guidelines
VI.B.5. Federal Jurisdiction VI.E.5.b. Number of Infringing
VI.F. Other Criminal Charges to Copyrighted Goods vs. Number of
Consider Labels, Documents, or Packaging
VIII.C.1. Offenses Involving Copyright Items
(Including Bootleg Music,
Index 423
PATENT PERFORMANCES AND
see generally Chapter VII PHONOGRAMS TREATY
see also V.A.1. DMCA's Background and
I.A. Why Is Intellectual Property Purpose
Enforcement Important?
PHONORECORDS
I.B. What Is Intellectual Property?
II.B. Elements
II.A.1. What Copyright Law Protects
II.B.3. Infringement of the Copyright
II.B.1.a.i. Original Work Fixed in a
II.B.3.a. Infringement by Reproduction
Tangible Medium
or Distribution
II.B.1.a.iii. Expression of an Idea vs.
II.B.3.a.i. Reproduction
Idea Itself
II.B.3.a.ii. Distribution
IV.B.3.a.iv. Novelty
II.B.3.b.i. Generally
IV.B.3.a.vi. Disclosure's Effects
II.B.3.c.iii. Work Being Prepared for
IV.B.5.c. Product Produced for or
Commercial Distribution
Placed in Interstate or Foreign
II.C.4.a. Operation of the Doctrine
Commerce
II.C.4.d. Special Rules for Rental,
IV.C.1. Parallel Development
Lease, and Lending
IV.C.2. Reverse Engineering
II.E.2. Sentencing Guidelines
PATENT APPLICATIONS V.B.5. Falsifying, Altering, or
IV.B.3.a.vi. Disclosure's Effects Removing Copyright Management
IV.B.5.c. Product Produced for or Information—17 U.S.C. § 1202
Placed in Interstate or Foreign V.C.6. Encryption Research
Commerce VI.B. Elements
VII.A. Overview of Patent VI.B.3.Trafficking in Labels Affixed to,
VII.C. False Marking of Patent—35 Enclosing, or Accompanying (or
U.S.C. § 292 Designed to be Affixed to,
Enclose, or Accompany) a
PATENT APPLIED FOR
Phonorecord, Computer Program,
VII.C. False Marking of Patent—35
Motion Picture or other
U.S.C. § 292
Audiovisual Work, Literary,
PATENT PENDING Pictorial, Graphic, or Sculptural
VII.C. False Marking of Patent—35 Work, or Work of Visual Art, or
U.S.C. § 292 Documentation or Packaging for
Such Works (i.e., Trafficked
PEER-TO-PEER FILE-TRADING
Either in Documentation or
II.B.3.a.ii. Distribution
Packaging for Such Works Itself,
II.B.3.c. Distribution of a Work Being
or in Labels for Such
Prepared for Commercial
Documentation or Packaging)
Distribution, by Making It
VI.B.4. The Labels, Documentation, or
Available on a Publicly-Accessible
Packaging Materials are
Computer Network, if the
Counterfeit or Illicit
Defendant Knew or Should Have
VI.B.5. Federal Jurisdiction
Known the Work Was Intended
VIII.E.1. Property Subject to Forfeiture
for Commercial Distribution
VIII.E.5.b. Infringing Items, Other
II.B.3.c.ii. Making the Work Available
Contraband, and Facilitating
on a Computer Network
Property
Accessible to Members of the
Public PLAIN ERROR
II.B.4.b. Legal Standard II.B.3.b.ii. Definition of "Retail Value"
II.C.5.b. Fair Use in Criminal Cases in this Context
VIII.D.3. Determining a Restitution
Figure
Index 425
PUBLIC DOMAIN III.B.3.b.iii. Making and Obtaining
II.B.1.f. Copyright Notice Counterfeits vs. Possession with
IV.B.3.a.v. Secrecy Intent to Traffic
IV.B.3.a.vi. Disclosure's Effects IV.B.5.b. Intent to Injure the Owner of
IV.C.5. Claim of Right—Public the Trade Secret
Domain and Proprietary Rights IV.F. Other Possible Charges
IV.D.2. Confidentiality and the Use of V.A.2. Key Concepts: Access Controls
Protective Orders vs. Copy Controls, Circumvention
V.B.1.c. To a Copyrighted Work vs. Trafficking
V.C.10.a. Congress's Constitutional V.B.1. Circumventing Access Controls,
Authority to Enact § 1201 of the 17 U.S.C. §§ 1201(a)(1) and
DMCA 1204
V.C.10.d. Fair Use V.B.2. Trafficking in Access Control
VII.C. False Marking of Patent—35 Circumvention Tools and
U.S.C. § 292 Services—17 U.S.C.
§§ 1201(a)(2) and 1204
PUBLIC PERFORMANCE
V.B.3. Trafficking in Tools, Devices,
I.B. What Is Intellectual Property?
and Services to Circumvent Copy
II.A.6. The Rights Protected by
Controls—17 U.S.C.
Copyright
§§ 1201(b)(1) and 1204
II.B.3. Infringement of the Copyright
V.B.5. Falsifying, Altering, or
II.B.3.a.ii. Distribution
Removing Copyright Management
PUBLIC HEALTH AND SAFETY Information—17 U.S.C. § 1202
III.A.2. Why Criminal Law Protects V.C.10.b.i. Facial Challenges
Trademarks, Service Marks, and VIII.C.1.a. Applicable Guideline is
Certification Marks § 2B5.3
IX.B.2. The Nature and Seriousness of VIII.C.1.f. Offenses Not Committed
the Offense for Commercial Advantage or
Private Financial Gain Reduces
PUBLICALLY ACCESSIBLE
the Offense Level by 2—U.S.S.G.
COMPUTER NETWORK
§ 2B5.3(b)(4) [before October 24,
see ACCESSIBLE TO THE GENERAL
2005: § 2B5.3(b)(3)]
PUBLIC
QUI TAM
PURPOSES OF COMMERCIAL
VII.C. False Marking of Patent—35
ADVANTAGE OR PRIVATE
U.S.C. § 292
FINANCIAL GAIN
II.A.7. When Infringement is Criminal QUID PRO QUO
II.B. Elements III.B.3.b.i. General Definition
II.B.3. Infringement of the Copyright
RACKETEER INFLUENCED AND
II.B.3.a. Infringement by Reproduction
CORRUPT ORGANIZATIONS
or Distribution
(RICO)
II.B.4. Additional Element for
II.E.2. Sentencing Guidelines
Enhanced Sentence: Purpose of
III.F. Other Charges to Consider
Commercial Advantage or Private
VI.F. Other Criminal Charges to
Financial Gain
Consider
II.B.4.a. History
VIII.E.4.a. Proceeds
II.B.4.b. Legal Standard
X.B.3.b. Advantages and Disadvantages
II.B.5. Misdemeanor Copyright
of Parallel Civil and Criminal
Infringement
Proceedings
II.C.5.b. Fair Use in Criminal Cases
II.E.1. Statutory Penalties READ-ALOUD
II.E.2. Sentencing Guidelines V.B.1.e. Regulatory Exemptions to
III.B.3.b.i. General Definition Liability under § 1201(a)(1)
Index 427
X.C.1.b.vi. Assistance from Private VICTIMS RESTITUTION ACT OF
Third Parties 1996
X.C.1.c.i. Consultative Process for
RETAIL VALUE
Acceptance of Assistance and Gifts
II.A.7. When Infringement is Criminal
X.C.3. Strategic and Case-Related
II.B. Elements
Issues
II.B.3. Infringement of the Copyright
RENTAL OF SOFTWARE II.B.3.a. Infringement by Reproduction
II.B.3. Infringement of the Copyright or Distribution
II.B.3.b. Infringement of at Least 10
REPACKAGING OF AUTHENTIC
Copies of 1 or More Copyrighted
OR GENUINE GOODS
Works With a Total Retail Value
III.B.4.a. Definition of Counterfeit
Exceeding $2,500 Within a
Mark Generally: Not Genuine or
180-Day Period
Authentic
II.B.3.b.i. Generally
III.C.3. Repackaging Genuine Goods
II.B.3.b.ii. Definition of "Retail Value"
REPEAT CRIMINAL OFFENDERS in this Context
IX.B.4. The Individual's History of II.B.3.c.iii. Work Being Prepared for
Criminal Offenses and Civil Commercial Distribution
Intellectual Property Violations II.B.5. Misdemeanor Copyright
Infringement
RESTITUTION
III.E.5. Sentencing Guidelines
III.C.3. Repackaging Genuine Goods
VI.E.5. Sentencing Guidelines
III.E.3. Restitution
VI.E.5.a. Retail Value of Copyrighted
IV.E.1.b. Criminal Forfeiture
Goods vs. Counterfeit Labels,
VI.E. Penalties
Documentation, and Packaging
VI.E.3. Restitution
VI.E.5.b. Number of Infringing
VIII. Penalties, Restitution, and
Copyrighted Goods vs. Number of
Forfeiture
Labels, Documents, or Packaging
VIII.A. Introduction
Items
VIII.D. Restitution
VIII.C.1.a. Applicable Guideline is
VIII.D.1. Restitution is Available—and
§ 2B5.3
Often Required—in Intellectual
VIII.C.1.c.i. Formula
Property Prosecutions
VIII.C.1.c.iii. Retail Value
VIII.D.2. Victims Include Owners of
VIII.C.1.c.iv. Determining Amounts
Intellectual Property and
and Values—Reasonable
Consumers Who Were Defrauded
Estimates Allowed
VIII.D.3. Determining a Restitution
VIII.D.3. Determining a Restitution
Figure
Figure
IX.B.2. The Nature and Seriousness of
the Offense REVERSE ENGINEERING
IX.D. The Adequacy of Alternative I.B. What Is Intellectual Property?
Non-Criminal Remedies II.B.3.b.i. Generally
X.A. Victims' Rights IV.C.2. Reverse Engineering
X.B.2. Ethical Concerns When the V.B.1.b. Technological Measures That
Criminal Prosecution Results in Effectively Control Access (an
an Advantage in a Civil Matter "Access Control")
X.B.2.b. Global Settlement V.C.5. Reverse Engineering and
Negotiations Interoperability of Computer
X.B.3.b. Advantages and Disadvantages Programs
of Parallel Civil and Criminal
REVERSE PASSING-OFF
Proceedings
III.D.4. Selling Another's Trademarked
see also MANDATORY
Goods As One's Own (Reverse
RESTITUTION, MANDATORY
Passing-Off)
Index 429
SIMILARITY OF DESIGN VI.A. Distinguished from Trademark
III.B.4.g. Likelihood of Confusion, and Copyright Statutes
Mistake, or Deception VI.B.3.Trafficking in Labels Affixed to,
Enclosing, or Accompanying (or
SOFTWARE
Designed to be Affixed to,
I.B. What Is Intellectual Property?
Enclose, or Accompany) a
II.A.6. The Rights Protected by
Phonorecord, Computer Program,
Copyright
Motion Picture or other
II.B.1.c. New Procedure for
Audiovisual Work, Literary,
"Preregistration"
Pictorial, Graphic, or Sculptural
II.B.1.d.iii. Registration of Particular
Work, or Work of Visual Art, or
Versions of a Work
Documentation or Packaging for
II.B.2.b. Proof at Trial
Such Works (i.e., Trafficked
II.B.3. Infringement of the Copyright
Either in Documentation or
II.B.3.a. Infringement by Reproduction
Packaging for Such Works Itself,
or Distribution
or in Labels for Such
II.B.3.a.ii. Distribution
Documentation or Packaging)
II.B.3.b.ii. Definition of "Retail Value"
VI.B.4. The Labels, Documentation, or
in this Context
Packaging Materials are
II.B.3.c.iii. Work Being Prepared for
Counterfeit or Illicit
Commercial Distribution
VI.E.5.a. Retail Value of Copyrighted
II.B.4.b. Legal Standard
Goods vs. Counterfeit Labels,
II.C.4.a. Operation of the Doctrine
Documentation, and Packaging
II.C.6. "Archival Exception" for
VIII.C.1.c.iii. Retail Value
Computer Software—17 U.S.C.
VIII.C.1.c.iv. Determining Amounts
§ 117
and Values—Reasonable
III.E.5. Sentencing Guidelines
Estimates Allowed
III.F. Other Charges to Consider
VIII.C.2.c.iii. Methods of Calculating
IV.B.3.a.i. Generally
Loss
IV.B.3.a.vii. Reasonable Measures to
VIII.E.4.b. Infringing Items, Other
Maintain Secrecy
Contraband, and Facilitating
IV.C.2. Reverse Engineering
Property
IV.F. Other Possible Charges
IX.C. Whether the Person is Subject to
V.A.3. Differences Between the DMCA
Prosecution in Another
and Traditional Copyright Law
Jurisdiction
V.B.1.a. Circumvented
X.A. Victims' Rights
V.B.1.b. Technological Measures That
Effectively Control Access (an SOLICITATION OF GIFTS
"Access Control") see GIFTS
V.B.1.d. How Congress Intended the
SOPHISTICATED MEANS
Anti-Circumvention Prohibition
VIII.C.2.e. Sophisticated Means—
to Apply
U.S.S.G. § 2B1.1(b)(9)(C)
V.B.1.e. Regulatory Exemptions to
VIII.C.2.h. Abuse of a Position of
Liability under § 1201(a)(1)
Trust—U.S.S.G. § 3B1.3
V.B.2.b. In a Technology, Product,
VIII.C.2.i. Use of Special Skill—
Service, or Part Thereof
U.S.S.G. § 3B1.3
V.B.2.c.3. Knowingly Marketed for
Circumvention SOUND RECORDINGS
V.B.3.b. Technological Measure That I.B. What Is Intellectual Property?
Effectively Protects a Right of a II.A.4. Federal Preemption
Copyright Owner Under This II.A.6. The Rights Protected by
Title ("Copy Control") Copyright
V.C.4. Information Security Exemption II.B.1.c. New Procedure for
V.C.6. Encryption Research "Preregistration"
Index 431
III.B.3. Intentionally Trafficked or STUDIO OUT-TAKES
Attempted to Traffic in Goods or II.E.2. Sentencing Guidelines
Services [after March 16, 2006: or
SUA
Labels, Documentation, or
see SPECIFIED ULAWFUL
Packaging for Goods or Services]
ACTIVITY
III.B.3.c. Goods and Services [after
March 16, 2006: and Labels, SUBPOENAS
Patches, Stickers, Wrappers, V.A.4. Other DMCA Sections That Do
Badges, Emblems, Medallions, Not Concern Prosecutors
Charms, Boxes, Containers, Cans,
SUBSTANTIAL STEP
Cases, Hangtags, Documentation,
IV.B.6. Attempts and Conspiracies,
or Packaging of Any Type or
Including the Impossibility
Nature]
Defense
III.B.4.a. Definition of Counterfeit
Mark Generally: Not Genuine or SUBSTANTIALLY OVERSTATES
Authentic THE SERIOUSNESS OF THE
III.B.4.e. Use of the Counterfeit Mark OFFENSE
"On or In Connection With" VIII.C.2.g. Downward Departure
Goods or Services Considerations—U.S.S.G. § 2B1.1
III.B.4.f. The Counterfeit Mark Must cmt. n.19(C)
Have Been Used for the Same
TAMPERING WITH PRODUCTS
Type of Goods or Services for
III.C.3. Repackaging Genuine Goods
Which the Genuine Mark Was
III.F. Other Charges to Consider
Registered
IV.E.1.b. Criminal Forfeiture
III.B.4.g. Likelihood of Confusion,
Mistake, or Deception TANGIBLE MEDIUM
III.B.5. The Defendant Used the I.B. What Is Intellectual Property?
Counterfeit Mark "Knowingly" II.A.1. What Copyright Law Protects
III.C.1. Authorized-Use Defense: II.B.1.a. Copyrightability
Overrun Goods II.B.1.a.i. Original Work Fixed in a
III.C.3. Repackaging Genuine Goods Tangible Medium
III.E.5. Sentencing Guidelines
TECHNICAL JOURNALS
VI.E.5.a. Retail Value of Copyrighted
IV.B.3.a.vi. Disclosure's Effects
Goods vs. Counterfeit Labels,
Documentation, and Packaging TECHNOLOGICAL MEASURES
VIII.C.1.a. Applicable Guideline is V.A.1. DMCA's Background and
§ 2B5.3 Purpose
VIII.D.1. Restitution is Available—and V.A.2. Key Concepts: Access Controls
Often Required—in Intellectual vs. Copy Controls, Circumvention
Property Prosecutions vs. Trafficking
VIII.E. Forfeiture V.A.2.a. Access Controls vs. Copy/Use
VIII.E.4.b. Infringing Items, Other Controls
Contraband, and Facilitating V.B.1. Circumventing Access Controls,
Property 17 U.S.C. §§ 1201(a)(1) and
VIII.E.5.a. Proceeds 1204
VIII.E.5.b. Infringing Items, Other V.B.1.a. Circumvented
Contraband, and Facilitating V.B.1.b. Technological Measures That
Property Effectively Control Access (an
"Access Control")
STORAGE COSTS
V.B.1.d. How Congress Intended the
III.D.6. Storage Costs and Destruction
Anti-Circumvention Prohibition
X.C.1.b.iv. Storage Costs in
to Apply
Counterfeit or Infringing Products
Cases
Index 433
II.B.1.a.ii. Short Phrases Are Not VIII.E.2.a. Administrative Forfeiture
Copyrightable Proceedings
II.C.3. Venue VIII.E.4.a. Proceeds
II.E.2. Sentencing Guidelines VIII.E.4.b. Infringing Items, Other
VI.A. Distinguished From Trademark Contraband, and Facilitating
and Copyright Statutes Property
VI.B.4. The Labels, Documentation, or VIII.E.4.c.ii. Victims' Ability to Forfeit
Packaging Materials are Property
Counterfeit or Illicit IX.D. The Adequacy of Alternative
VI.D.2. Advantages of Charging a Non-Criminal Remedies
§ 2318 Offense X. Victims of Intellectual Property
VI.E.5.a. Retail Value of Copyrighted Crimes— Ethics and Obligations
Goods vs. Counterfeit Labels, X.B.3.a. Private Civil Remedies
Documentation, and Packaging X.C.1.b.iv. Storage Costs in
VI.E.5.b. Number of Infringing Counterfeit or Infringing Products
Copyrighted Goods vs. Number of Cases
Labels, Documents, or Packaging
TRAFFICKING IN ACCESS
Items
CONTROL CIRCUMVENTION
VI.F. Other Criminal Charges to
TOOLS AND SERVICES
Consider
V.B.2. Trafficking in Access Control
VII.A. Overview of Patent
Circumvention Tools and
VIII.C.1. Offenses Involving Copyright
Services—17 U.S.C.
(Including Bootleg Music,
§§ 1201(a)(2) and 1204
Camcorded Movies, and the
Unauthorized Use of Satellite, TREBLE DAMAGES
Radio, and Cable X.B.2.b. Global Settlement
Communications), Trademark, Negotiations
Counterfeit Labeling, and the
UNAUTHORIZED DISCLOSURE OF
DMCA
GOVERNMENT INFORMATION
VIII.C.1.a. Applicable Guideline is
IV.A. Introduction
§ 2B5.3
VIII.C.1.c.ii. Number of Infringing UNIFORM TRADE SECRETS ACT
Items IV.A. Introduction
VIII.C.1.c.iv. Determining Amounts IV.B.2. Relevance of Civil Cases
and Values—Reasonable IV.B.3.a.viii. Independent Economic
Estimates Allowed Value
VIII.C.1.e. Manufacturing, Importing, IV.C.6. The First Amendment
or Uploading Infringing Items VIII.C.2.c.iii. Methods of Calculating
Increases the Offense Level by 2— Loss
U.S.S.G. § 2B5.3(b)(3) [Before see also TRADE SECRETS
October 24, 2005: § 2B5.3(b)(2)]
UNITS OF PROSECUTION
VIII.D.1. Restitution is
III.D.7. Units of Prosecution
Available—and Often
Required—in Intellectual Property UNPUBLISHED COPYRIGHTED
Prosecutions WORK
VIII.D.2. Victims Include Owners of II.C.5.a. Unpublished Works
Intellectual Property and
UPLOADING
Consumers Who Were Defrauded
II.B.3.a.ii. Distribution
VIII.D.3. Determining a Restitution
IV.B.3.b.i. Types of Misappropriation
Figure
VIII.C.1.a. Applicable Guideline is
VIII.E. Forfeiture
§ 2B5.3
VIII.E.1. Property Subject to Forfeiture
VIII.C.1.e. Manufacturing, Importing,
or Uploading Infringing Items
Index 435
WRIT OF MANDAMUS
see MANDAMUS